Bank of America Corporation v. Pertshire Marketing, Ltd
Claim Number: FA0606000743461
Complainant is Bank of America Corporation (“Complainant”), represented by Randel S. Springer, of Womble Carlyle Sandridge & Rice, PLLC, One West Fourth Street, Winston-Salem, NC 27101. Respondent is Pertshire Marketing, Ltd (“Respondent”), Trident Chambers, Wickhams Cay 1, PO Box 146, Road Town, Tortola VG.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <banckamerica.com>,
<banckofamerca.com>, <banckofamerican.com> and <bankamerical.com>,
registered with Capitoldomains, Llc and <banknofamerica.com>,
registered with Domaindoorman, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2006.
On July 6, 2006, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <banckamerica.com>, <banckofamerca.com>, <banckofamerican.com> and <bankamerical.com> domain names are registered with Capitoldomains, Llc and that Respondent is the current registrant of the names. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc 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 July 12, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <banknofamerica.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the names. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 July 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 2006 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@banckamerica.com, postmaster@banckofamerca.com, postmaster@banckofamerican.com, postmaster@bankamerical.com and postmaster@banknofamerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <banckamerica.com>, <banckofamerca.com>, <banckofamerican.com>, <bankamerical.com> and <banknofamerica.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <banckamerica.com>, <banckofamerca.com>, <banckofamerican.com>, <bankamerical.com> and <banknofamerica.com> domain names.
3. Respondent registered and used the <banckamerica.com>, <banckofamerca.com>, <banckofamerican.com>, <bankamerical.com> and <banknofamerica.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bank of America Corporation, is the second largest banking company in the world. In connection with its banking services, Complainant holds a trademark registration for the BANK OF AMERICA mark (Reg. No. 853,860 issued July 30, 1968) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the disputed domain names as follows: <banknofamerica.com> and <banckofamerican.com> on October 3, 2005; <banckamerica.com> on October 9, 2005; <bankamerical.com> on October 17, 2005; and <banckofamerca.com> on October 22, 2005. The disputed domain names resolve to websites that feature advertisements for competing websites that offer financial information and services.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must 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 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 has established rights in the BANK OF AMERICA mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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 [or] have acquired secondary meaning.”).
Complainant asserts that the disputed domain names are confusingly similar to its BANK OF AMERICA mark. The <banckofamerca.com>, <banckofamerican.com> and <banknofamerica.com> domain names all contain slight variations of the BANK OF AMERICA mark by misspelling the terms “bank” and “america.” Similarly, the <banckamerica.com> and <bankamerical.com> domain names misspell the terms “bank” and “america” and omit the preposition “of.” The Panel finds that the disputed domain names are all simple typographical variations of the BANK OF AMERICA mark. Accordingly, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s BANK OF AMERICA mark. See Bank of Am. Corp. v. Khan, FA 114324 (Nat. Arb. Forum July 5, 2002) (finding the <banckofamerica.com> domain name to be confusingly similar to the complainant’s BANK OF AMERICA mark.); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant establishes such a prima facie showing, the burden shifts to Respondent to affirmatively prove that it has rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the 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”). The Panel finds that Complainant has established a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names.
Respondent’s failure to respond to the Complaint raises a
presumption that Respondent lacks rights and legitimate interests in the
disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also 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 the respondent never submitted a response or provided the panel
with evidence to suggest otherwise).
The Panel, however, shall evaluate the record to determine if Respondent
has rights or legitimate interests in the disputed domain names.
Complainant asserts that Respondent is not using any
of the the disputed domain names for a bona fide offering of goods or
services or a legitimate noncommercial use.
The disputed domain names resolve to websites that feature
advertisements for competing websites that offer financial information and
services. The Panel finds that the use
of the confusingly similar domain names to display advertisements and links to
competing websites does not qualify as a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use
pursuant to Policy ¶ 4(c)(iii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the
respondent’s use of the disputed domain name to host a series of hyperlinks and
a banner advertisement was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the domain name); see
also De La Rue Holdings PLC v. Video Images Prods.
L.L.C., FA 196054 (Nat. Arb. Forum Oct.
27, 2003) (finding that the respondent was not using the <delaru.com>
domain name for a bona fide offering of goods or services or a
legitimate noncommercial or fair use because the respondent was using the
domain name to “subject unsuspecting users to a barrage of unsolicited [pop-up]
advertisements,” presumably for commercial benefit).
Additionally, Complainant asserts that Respondent is not commonly known by any of the disputed domain names. According to the WHOIS database, the disputed domain names are registered to “Pertshire Marketing, Ltd.” Because there is no other evidence in the record to suggest otherwise, the Panel must find that Respondent is not commonly known by any of the disputed domain names. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant asserts that Respondent registered and used the
disputed domain names in bad faith. The
Panel reasonably infers that Respondent has accumulated click-through fees by
displaying advertisements on the resulting websites. Additionally, the Panel finds that the use of disputed domain
names that contain mere typographical variations of Complainant’s mark will
likely cause confusion as to Complainant’s affiliation with or sponsorship of
the resulting websites. Accordingly,
the Panel finds that Respondent has registered and used the confusingly similar
domain names in bad faith by displaying advertisements and links to competing
websites for financial gain pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Additionally, the Panel finds that Respondent’s registration and use of the disputed domain names that consist of simple typographical variations of Complainant’s mark amounts to typosquatting and evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
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 <banckamerica.com>, <banckofamerca.com>, <banckofamerican.com>, <bankamerical.com> and <banknofamerica.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice,
Supreme Court, NY (Ret.)
Dated: August 29, 2006
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