Bank of America Corporation v Cupcake Patrol
Claim Number: FA0102000096582
The Complainant is Bank of America Corporation, Charlotte, NC, USA ("Complainant") represented by Larry C. Jones, of Alston & Bird LLP. The Respondent is Cupcake Patrol, Andalusia, PA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "bankofamercia.com" registered with CORE.
On March 13, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 1, 2001; the Forum received a hard copy of the Complaint on February 5, 2001.
On February 2, 2001, CORE confirmed by e-mail to the Forum that the domain name "bankofamercia.com" is registered with CORE and that the Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 2001 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 Respondentís 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.
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 Forumís Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant alleges the following:
Respondent has not submitted a response in this matter.
Complainant, Bank of America Corporation, is duly organized and existing under the laws of the State of Delaware with its principle place of business in Charlotte, North Carolina. Complainant is the largest consumer bank in the United States and one of the countryís best-known financial institutions. Complainant has exclusively used its registered mark, BANK OF AMERICA, to identify its banking and financial services.
In addition, Complainant offers various financial services via its web site, BankofAmerica.com.
Respondent, Cupcake Patrol a.k.a. John Zuccarini, is not a bank, investment firm, or other financial institution, and Respondent has no preexisting rights in "Bank of America" as a trademark, service mark, or trade name. Respondent has registered thousands of typographical errors or misspellings of famous people and marks as domain names. Currently, Respondent is using the disputed domain name for commercial purposes to direct unsuspecting Internet users to web sites where various products and services are promoted.
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.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
Complainantís rights are evidenced by its registered mark BANK OF AMERICA.
The Panel finds that Respondentís domain name is confusingly similar to Complainantís well-established mark because the disputed domain name, bankofamercia.com, is merely a "typo" or misspelling of Complainantís famous mark. See Bank of America Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondentís domain name <wwwbankofamerica.com> is confusingly similar to Complainantís registered trademark "Bank of America" because it "takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet"); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondentís domain name, <americanonline.com>, is confusingly similar to the Complainantís famous mark); Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names "tdwatergouse.com" and "dwaterhouse.com" are virtually identical to Complainantís TD WATERHOUSE name and mark).
Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the domain name at issue. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected web sites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainantís products to Respondentís site by using Complainantís mark); America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainantís mark "as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate").
In addition, Respondent asserted no rights or legitimate interests in the disputed domain name. Consequently, the Panel is free to conclude Respondent has no such rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondentsí failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names"); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
Registration and Use in Bad Faith
The Panel finds that Respondent registered the disputed domain name to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainantís famous mark as to the source, sponsorship, affiliation and endorsement of Respondentís web site. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainantís well known marks, thus creating a likelihood of confusion strictly for commercial gain); see also ESPN, Inc. v. Danny Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain).
Further, the evidence shows Respondent has registered many infringing domain names, which also shows bad faith. See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Aug. 17, 2000) (finding that the Respondent violated Policy ∂ 4(b)(ii) by registering multiple domain names which infringe upon othersí famous and registered trademarks); see also Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.
Accordingly, it is Ordered that the domain name, bankofamercia.com, be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: March 19, 2001
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