Bank of America Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2007001906307
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <portal-us-bankofamerica.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2020; the Forum received payment on July 28, 2020.
On July 29, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <portal-us-bankofamerica.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@portal-us-bankofamerica.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 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a large financial institution that provides banking, investment, wealth management and other financial products and services. Complainant asserts rights in the BANK OF AMERICA trademark through its registration of the trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860 registered on July 30, 1968). Respondent’s <portal-us-bankofamerica.com> domain name is confusingly similar to Complainant’s trademark because it incorporate the trademark in its entirety and adds the generic term “portal” along with the geographic term “us.”
Respondent lacks rights or legitimate interests in the <portal-us-bankofamerica.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the BANK OF AMERICA trademark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to generate click through revenue through hyperlinks to third party websites.
Respondent registered and uses the<portal-us-bankofamerica.com> domain name in bad faith. Respondent engages in a pattern of bad faith registrations. Respondent uses the domain name to generate click through revenue through hyperlinks that direct users to third party websites. Finally, Respondent registered the domain name with knowledge of Complainant’s rights in the BANK OF AMERICA trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 853,860 BANK OF AMERICA (word), registered July 30, 1968 for services in class 36;
No. 2,713,720 BANK OF AMERICA (word), registered May 6, 2003 for goods and services in classes 9, 16, 35, 36 and 38;
No. 873,828 BANK OF AMERICA (word), registered July 29, 1969 for goods in class 16; and
No. 932,728 BANK OF AMERICA (word), registered April 18, 1972 for services in class 36.
The Complainant is also the owner of numerous trademark registrations for the trademarks BANK OF AMERICA, either alone or in combination with other terms, in numerous countries throughout the world, including but not limited to the European Union, Hong Kong, Australia, Canada and the United Kingdom.
The disputed domain name was registered on February 5, 2020.
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”).
The Complainant asserts rights in the BANK OF AMERICA trademark through its registration of the trademarks with the USTPO, as well as a number of other trademark agencies around the world. Registration of a trademark with the USTPO is generally sufficient to demonstrate rights in the trademark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT trademark). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 853,860 registered on July 30, 1968). Therefore, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <portal-us-bankofamerica.com> domain name is confusingly similar to Complainant’s trademark because the disputed domain name incorporates the BANK OF AMERICA trademark in its entirety adding the generic term “portal” and the geographic term “us.” The Panel notes that while Complainant does not argue this, Respondent also adds hyphens and the “.com” gTLD to the trademarks to form the disputed domain name. The addition of a generic or descriptive term, a hyphen, and a gTLD is generally not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL trademark. It incorporates the trademark entirely. It adds hyphens, the generic term “portal”, the geographic term “us.” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from Complainant’s trademark for the purposes of Policy ¶ 4(a)(i).”). The added words rather indicate that the disputed domain name is created by the Complainant in order to offer the Complainant’s US customers a special online portal for the Complainant’s banking services. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks per Policy¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <portal-us-bankofamerica.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BANK OF AMERICA trademark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names shows the registrant’s name is “Carolina Rodrigues / Fundacion Comercio Electronico” and nothing in the record indicates that Respondent is licensed to use Complainant’s trademarks or is known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <portal-us-bankofamerica.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent uses the domain name to generate click through revenue by hosting hyperlinks to third parties. Use of disputed domain name to commercially benefit from third party hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Here, Complainant argues that Respondent hosts a hyperlinks in order to generate click through revenue. Complainant provides a screenshot of the disputed domain name which appears to feature links to third parties. Thus, the Panel agrees that Respondent’s use of <portal-us-bankofamerica.com> indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
The Complainant contends that Respondent’s registration of the <portal-us-bankofamerica.com> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant includes a list of prior UDRP cases where Respondent, Carolina Rodrigues, has been ordered to transfer ownership of domain names. The Panel therefore determines that the registration and use of the <portal-us-bankofamerica.com> domain name is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <portal-us-bankofamerica.com> domain name in bad faith. As noted above, Complainant argues that Respondent generates click through revenue by hosting hyperlinks to third parties on the disputed domain name. Such use may be evidence of bad faith under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). The Panel recalls that Complainant provided a screenshot of the disputed domain name’s resolving webpage which appears to feature third party links. The Panel therefore agrees with the Complainant’s conclusion, and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's BANK OF AMERICA trademark, it is inconceivable that Respondent could have registered the <portal-us-bankofamerica.com> domain name without actual and/or constructive knowledge of Complainant's rights in the trademark. The Panel here find that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agree with Complainant that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain name to trade off the goodwill associated with Complainant’s trademark to commercially benefit the Respondent indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the trademark and thus registered the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <portal-us-bankofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 7, 2020
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