Bank of America Corporation v. Stop2Shop.com a/k/a Gene Vozzola
Claim Number: FA0210000128076
Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is Stop2Shop.com a/k/a Gene Vozzola, Hollywood, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankof-america.com>, registered with Register.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 14, 2002; the Forum received a hard copy of the Complaint on October 17, 2002.
On October 15, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <bankof-america.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 October 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 11, 2002 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
The <bankof-america.com> domain name is identical to Complainant’s BANK OF AMERICA mark.
Respondent has no rights or legitimate interests in the <bankof-america.com> domain name.
Respondent registered and used the <bankof-america.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant owns a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the BANK OF AMERICA mark (Reg. No. 853,860). Complainant received trademark registration status in 1968. Complainant has used the BANK OF AMERICA mark over the years to denote its financial related services.
Complainant’s BANK OF AMERICA services have grown due to Complainant’s investment in advertising and promoting its services under the BANK OF AMERICA mark worldwide. In an effort to further its business interests, Complainant operates a website at <bankofamerica.com>. At this website Complainant promotes a wide variety of financial services. Complainant spends a substantial amount of money annually to advance its BANK OF AMERICA financial services.
Respondent registered the <bankof-america.com> domain name on August 2, 2002. The <bankof-america.com> domain name is actively used to link Internet users to a website called “Stop2Shop Superstore.” At this website Respondent offers a wide variety of goods for sale to the general public. Complainant sent two separate letters to Respondent demanding that Respondent cease its use of the <bankof-america.com> domain name and transfer the registration rights. Respondent failed to reply and still uses the domain name to divert to its general sales website.
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 the 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.
Paragraph 4(a) of the Policy requires that the 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.
Identical and/or Confusingly Similar
Complainant has established its rights in the domain name by proof of registration with the USPTO.
Respondent’s <bankof-america.com> domain name contains Complainant’s entire BANK OF AMERICA mark. The second-level domain is identical to the BANK OF AMERICA mark but for the hyphen in between “of” and “america.” Adding a hyphen to a trademark in a domain name does not create a distinct domain name because a hyphen has no distinguishing characteristics. Therefore, the second-level domain is identical to the mark, and the generic top-level domain “.com” has no legal significance. Thus, Respondent’s <bankof-america.com> domain name is identical to Complainant’s BANK OF AMERICA mark. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not come forward to challenge Complainant’s prima facie Complaint. Moreover, the burden of demonstrating rights or legitimate interests in the <bankof-america.com> domain name shifted to Respondent when Complainant asserted that Respondent lacked such rights or interests. Therefore, Respondent has not met its burden and the Panel may presume that Respondent has no rights or legitimate interests in the <bankof-america.com> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, because the Complaint remains uncontested, the Panel accepts all allegations as true and will draw all reasonable inferences in favor of Complainant. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent is actively using the <bankof-america.com> domain name to divert Internet traffic to its “Stop2Shop Superstore” related website, whereby consumers may purchase a plethora of assorted goods. It is fair to say that Internet traffic is being diverted by the <bankof-america.com> domain name because there is no logical connection between the second-level domain, which is identical to Complainant’s longstanding BANK OF AMERICA mark, and the goods offered for sale at the resulting website. Respondent is not in the banking business; rather, Respondent appears to operate in the consumer sales industry. Thus, it is apparent that Respondent opportunistically uses the <bankof-america.com> domain name because of the value associated with the BANK OF AMERICA mark. Hence, Respondent fails to use the <bankof-america.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and Respondent’s use does not represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Respondent has not come forward to support a finding that the <bankof-america.com> domain name is Respondent’s common identity. The only evidence of Respondent’s identity, the WHOIS information page, reflects Respondent’s name as either <stop2shop.com> or Gene Vozzola. Therefore, Respondent is not commonly known by the <bankof-america.com> domain name and has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in the <bankof-america.com> domain name; therefore, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent commercially benefits from its infringing use of Complainant’s BANK OF AMERICA mark, which, as previously stated, Respondent has no logical connection with. The Internet traffic that Respondent diverts to its website by way of the <bankof-america.com> domain name is more than likely searching for Complainant by using the BANK OF AMERICA mark when entering a domain name address. Therefore, the resulting “Stop2Shop Superstore” website creates source confusion for Internet users. Respondent is trading off of the value associated with the BANK OF AMERICA mark to increase its website hits and potentially draw more business based on the strength of the mark. Hence, Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (presuming Respondent profits from its diversionary use of Complainant’s mark when Respondent’s domain name resolves to commercial websites and Respondent fails to contest the Complaint, therefore, concluding bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
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 the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <bankof-america.com> be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 13, 2002
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