Bank of America Corporation v. Maurizio Billi
Claim Number: FA2007001906122
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is Maurizio Billi (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamericapro.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2020; the Forum received payment on July 27, 2020.
On July 29, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bankofamericapro.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bankofamericapro.com. Also, on July 31, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
A. Complainant
Complainant is a worldwide financial business, offering services in banking, investment, wealth management, and other related services. Complainant has rights in the BANK OF AMERICA mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 853,860, registered Jul. 30, 1968; Reg. 2,713,720, registered May 6, 2003). Respondent’s <bankofamericapro.com> is confusingly similar to Complainant’s mark, as it in incorporates the mark entirely and merely adds the generic word “pro,” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bankofamericapro.com> domain name, as it is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BANK OF AMERICA mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant in email exchanges in furtherance of a fraudulent bank guarantee scheme.
Respondent registered and uses the <bankofamericapro.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant in emails from the disputed domain name for the purpose of phishing for customer information in a fraudulent bank guarantee scheme. Respondent also had notice of Complainant’s rights in the BANK OF AMERICA mark when it registered the disputed domain name. Finally, Respondent’s use of a privacy service further demonstrates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bank of America Corporation (“Complainant”), of Charlotte, NC, USA. Complainant is the owner of domestic and international registrations for the mark BANK OF AMERICA and numerous variations thereof which constitute the family of Bank of America marks. Complainant has continuously used the mark since at least as early as 1968 in connection with its provision of banking and financial services. Complainant also owns multiple domain names that incorporate its mark such as <bankofamerica.com>.
Respondent is Maurizio Billi (“Respondent”), of Sao Paulo, Brazil. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <bankofamericapro.com> domain name was registered on or about Oct. 19, 2017.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the BANK OF AMERICA mark through its numerous registrations with the USPTO. (e.g. Reg. 853,860, registered Jul. 30, 1968; Reg. 2,713,720, registered May 6, 2003). Registration with the USPTO is generally sufficient for demonstrating rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has established rights in the BANK OF AMERICA mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bankofamericapro.com> domain name is confusingly similar to its BANK OF AMERICA mark, as it fully incorporates the mark and merely adds the word “pro,” along with the “.com” gTLD to the end of the mark. Under Policy ¶ 4(a)(i), adding a generic term and a gTLD are not sufficient changes to differentiate a disputed domain name from the mark it incorporates. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Complainant asserts that Respondent’s disputed domain name incorporates Complainant’s mark entirely, and simply adds the generic word “pro,” along with the “.com” gTLD to the end. The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights or legitimate interests in the <bankofamericapro.com> domain name, as it is not commonly known by the disputed domain name, and Complainant has not licensed or authorized Respondent to use its mark in the domain name. Per Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Maurizio Billi”, and nothing in the record rebuts Complainant’s claim that it has not authorized Respondent to use its BANK OF AMERICA mark in the domain name. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <bankofamericapro.com> domain name for any bona fide offering of goods or service, nor any legitimate noncommercial or fair use. Instead, Complainant believes Respondent is attempting to pass itself off as Complainant in emails in order run a fraudulent scheme promoting fake bank guarantees. Using a disputed domain name to pass off as a complainant in emails and as part of a fraudulent scheme is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Complainant provides screenshots which show emails sent from the disputed domain that allegedly attempt to pass off as agents of Complainant. Complainant also provides a bank guarantee, which it alleges is a fraudulent guarantee from Respondent. The Panel here finds that Respondent has not used the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <bankofamericapro.com> domain name in bad faith by passing off as Complainant in emails as part of a fraudulent email scheme. Using a disputed domain name to pass off as a complainant in email exchanges is considered a bad faith use under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). The Panel again notes Complainant’s screenshot of an email from the disputed domain name, where Respondent apparently attempts to represent itself as an agent of Complainant. The Panel here finds that Respondent uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <bankofamericapro.org> domain name in bad faith, as it had notice of Complainant’s rights in the BANK OF AMERICA mark when it registered the domain name. Registering a domain name that incorporates a widely known and registered mark may demonstrate actual knowledge under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides numerous sources detailing the widespread use and notoriety of Complainant’s registered BANK OF AMERICA mark and business in connection with which the mark is used. The Panel here finds that Respondent registered the disputed domain name in bad faith with actual notice under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericapro.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Sept.8, 2020
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