Bank of America Corporation v. Samuel
Tsien
Claim
Number: FA0501000406872
Complainant is Bank of America Corporation (“Complainant”),
represented by Randel S. Springer of Womble Carlyle Sandridge and Rice, PLLC, One West Fourth Street, Winston-Salem, NC, 27101. Respondent is Samuel Tsien (“Respondent”), 1300
Monroe Drive, Atlanta, GA, 30306.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bankofamericaasia.com>, registered with Enom,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically January
20, 2005; the National Arbitration Forum received a hard copy of the Complaint January
24, 2005.
On
January 21, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <bankofamericaasia.com> is registered
with Enom, Inc. and that Respondent is the current registrant of the name. Enom,
Inc.verified that Respondent is bound by the Enom, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005, by which Respondent could file a response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@bankofamericaasia.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 28, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. The domain name that Respondent
registered, <bankofamericaasia.com>, is confusingly similar to
Complainant’s BANK OF AMERICA mark.
2. Respondent has no rights to or legitimate
interests in the <bankofamericaasia.com> domain name.
3. Respondent registered and used the <bankofamericaasia.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant is
the second largest banking company in the world and is well known throughout
the United States. Complainant operates some 5,700 banking centers in 29 states
and in the District of Columbia. These operations serve more than one in four
households in the United States.
Complainant and
its predecessors have used the BANK OF AMERICA mark continuously in connection
with banking services since at least as early as 1928. Complainant holds
numerous trademark registrations for the BANK OF AMERICA mark, including U.S.
Reg. No. 853,860 (issued July 30, 1968), which is on file at the United States
Patent and Trademark Office. Complainant also operates a website at the
<bankofamerica.com> domain name that has 11.8 million active users.
Respondent
registered the <bankofamericaasia.com> domain name September 8,
2004. Respondent registered the domain name under the name Samuel Tsien, the
name of the Chief Executive Officer for Complainant’s affiliate in Asia. Mr.
Tsien denied any involvement in the registration of the domain name. The
address and phone number listed for Mr. Tsien is actually the address of the
personal residence of Michael P. Jenkins, a man who claims to have no knowledge
of either the domain name or of Mr. Tsien. The domain name does not resolve to
an active website and does not appear to be in use.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of Respondent's
failure to submit a response, the Panel shall decide this administrative
proceeding on the basis of Complainant's undisputed representations pursuant to
paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as
the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights to or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant
established by extrinsic proof in this proceeding that it has rights in the
BANK OF AMERICA mark through registration with the United States Patent and
Trademark Office and through continuous use of the mark in commerce since 1928.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The <bankofamericaasia.com>
domain name is confusingly similar to Complainant’s BANK OF AMERICA registered
trademark. The domain name fully incorporates the mark while merely adding the
geographic term “asia” and the “.com” generic top-level domain and removing
spaces from the mark. The addition of a geographic descriptor and a generic
top-level domain and the removal of spaces do not distinguish the <bankofamericaasia.com> domain
name from Complainant’s BANK OF AMERICA mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001)
(finding that the <sunkistasia.com> domain name was confusingly similar
to the complainant’s registered SUNKIST mark); see also Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that the domain name
<net2phone-europe.com> was confusingly similar to the complainant’s mark
because “the combination of a geographic
term with the mark does not prevent a domain name from being found confusingly
similar”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for any of the three “safe harbors” provided under Policy ¶¶
4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who
must come forward with evidence rebutting Complainant’s allegations in order to
prevail on this element. In this case, Complainant has made a prima facie showing
that Respondent does not have any rights or legitimate interests in the
disputed domain name. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the
Respondent has no rights or legitimate interests in respect of the Domain Name
requires the Complainant to prove a negative. . . . [I]t is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
[to the] Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted
that a respondent has no rights or legitimate interests with respect to the
domain name it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”).
Complainant made
a prima facie showing that Respondent does not have any rights or
legitimate interests in the disputed domain name and the burden shifts to
Respondent to demonstrate that rights to or legitimate interests in the domain
name. In this proceeding, Respondent has not submitted a response. Thus,
Respondent has failed to present any circumstances under which it could
substantiate rights or legitimate interests in the disputed domain name.
Furthermore, because Respondent has failed to submit a response in this
proceeding, the Panel may accept as true all reasonable allegations submitted
by Complainant in the Complaint. See Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the
respondent has no rights or legitimate interests in the domain name because it
never submitted a response or provided the panel with evidence to suggest
otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response the panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent
is not using the disputed domain name for any purpose. Therefore, it cannot be
said to be making a bona fide offering of goods or services, nor can it be said
to be making a legitimate noncommercial or fair use of the domain name. In
these circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to
Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy.”); see also Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where the respondent failed to submit a response to the complaint and
made no use of the domain name in question).
No
evidence before the Panel suggests Respondent is commonly known by the <bankofamericaasia.com>
domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information
indicates that the registrant of the disputed domain name is known as “Samuel
Tsien” and is not known by the confusingly similar second-level domain that
infringes on Complainant’s BANK OF AMERICA mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have
rights or legitimate interests in a domain name when the respondent is not
known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of the domain name, additional factors can also be
used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Respondent is
not using the <bankofamericaasia.com> domain name, which is
confusingly similar to Complainant’s BANK OF AMERICA mark, for any purpose.
Although the domain name was registered less than six months ago, the Panel
finds that it is inconceivable that Respondent could make any use of the
disputed domain name without creating a false impression of association with
Complainant. Such opportunistic holding of a domain name that is confusingly
similar to a well-known mark equates to bad faith use and registration under
Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb.
Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(a)(iii) even though
the respondent had not used the domain name because “[i]t makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will create the confusion described in the Policy”); see
also Alitalia–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260
(WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the
domain name in question, and there were no other indications that the
respondent could have registered and used the domain name in question for any
non-infringing purpose); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ
mark was so obviously connected with the complainant and its products that the
use of the domain names by the respondent, who had no connection with the
complainant, suggests opportunistic bad faith); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
was “inconceivable that Respondent could make any active use of the disputed
domain names without creating a false impression of association with
Complainant”).
Respondent’s
registration of the disputed domain name, which is confusingly similar to a
well-known mark in which Complainant has rights, suggests that Respondent knew
of Complainant’s rights in the BANK OF AMERICA mark. Additionally,
Complainant’s trademark registration, on file at the United States Patent and
Trademark Office, gave Respondent constructive notice of Complainant’s rights
in the mark. Thus, the Panel finds that Respondent chose the <bankofamericaasia.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that the respondent exhibited bad faith where the respondent was aware
of the complainant’s famous mark when registering the domain name and was aware
of the deception and confusion that would inevitably follow if it used the
domain name); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bankofamericaasia.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 14, 2005.
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