Bank of America Corporation v. Michele
Dinoia
Claim
Number: FA0412000390945
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 Michele Dinoia (“Respondent”), Via
Trilussa 11, Pineto, TE 64025, Italy.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bamkofamerica.com>,
registered with Tuonome.it Srl.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
22, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 27, 2004.
On
December 23, 2004, Tuonome.it Srl confirmed by e-mail to the National
Arbitration Forum that the domain name <bamkofamerica.com>
is registered with Tuonome.it Srl and that Respondent is the current registrant
of the name. Tuonome.it Srl has verified that Respondent is bound by the Tuonome.it
Srl 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
January 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 24,
2005 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@bamkofamerica.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
January 27, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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 name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <bamkofamerica.com> domain name is confusingly
similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or
legitimate interests in the <bamkofamerica.com>
domain name.
3. Respondent registered and used the <bamkofamerica.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, the
second largest banking company in the world, operates over 5,700 banking
centers in 29 states and in the District of Columbia. These operations serve
more than one in four households in the United States. Complainant and its
predecessors in interest have used the BANK OF AMERICA mark continuously since
at least as early as 1928. Complainant holds numerous trademark registrations
for the BANK OF AMERICA mark, including U.S. Reg. No. 853,860 (issued December
14, 1966), which is on file at the United States Patent and Trademark Office.
In addition, Complainant operates a website at the <bankofamerica.com>
domain name to promote Complainant’s services. The website at Complainant’s
<bankofamerica.com> domain name has 11.8 million active users.
Respondent
registered the <bamkofamerica.com> domain name on June 10, 2002.
The disputed domain name resolves to a website that contains sponsored links to
various commercial websites. Some of the links direct Internet users to
websites of Complainant’s direct competitors. Respondent is not a licensee of
Complainant and is not authorized to use Complainant’s mark for any purpose.
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.
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
established by extrinsic proof in this proceeding that it has rights in the
BANK OF AMERICA mark through registration with the United States Patent and
Trademark Office and through continuous use of the mark in commerce since 1928.
See 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 and
have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar.
5, 2002) finding that Panel decisions have held that registration of a mark is
prima facie evidence of validity, which creates a rebuttable presumption that
the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.
The <bamkofamerica.com>
domain name is confusingly similar to Complainant’s BANK OF AMERICA registered
trademark. The domain name fully incorporates the mark while merely removing
spaces from the mark, substituting the letter “m” for the letter “n,” and
adding the “.com” generic top-level domain. Removing spaces from the mark,
misspelling a word in the mark, and the addition of a generic top-level domain
do not distinguish the <bamkofamerica.com> domain name from
Complainant’s BANK OF AMERICA mark. See
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; see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2001) finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”; see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks; see also 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 Complainant’s TD WATERHOUSE name and mark.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
did not submit a response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments unrefuted. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Because Respondent has
failed to submit a response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <bamkofamerica.com> domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting a response, Respondent
failed to invoke any circumstance which could demonstrate any rights or
legitimate interests in the domain name; see
also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of the
Complaint to be deemed true.
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The record reveals that the <bamkofamerica.com> domain name redirects unsuspecting
Internet users to a website that provides links to other commercial websites,
including websites that offer services that are in competition with
Complainant’s banking services. The Panel infers that Respondent commercially
benefits from this diversion by receiving pay-per-click fees from advertisers
when Internet users follow the links on its website. Respondent makes
opportunistic use of Complainant’s mark in order to capitalize on the goodwill
and fame associated with the BANK OF AMERICA mark; thus, Respondent fails to
establish rights or legitimate interests in the domain name. See Ticketmaster Corp. v. DiscoverNet,
Inc., D2001-0252 (WIPO Apr. 9, 2001) finding no rights or legitimate
interests where Respondent generated commercial gain by intentionally and
misleadingly diverting users away from Complainant’s site to a competing
website; see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be
unconscionable to find that a bona fide offering of services in a
respondent’s operation of [a] web-site using a domain name which is confusingly
similar to the complainant’s mark and for the same business.”).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the
registrant of the disputed domain name is known as “Michele Dinoia” and is not
known by the confusing second-level domain that infringes on Complainant’s BANK
OF AMERICA mark. Moreover, Respondent is not authorized or licensed to use
Complainant’s mark for any purpose. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply; see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail”; see also 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; see also MRA Holding, LLC v. Costnet,
FA 140454 (Nat. Arb. Forum Feb. 20, 2003) noting that “the disputed domain name
does not even correctly spell a cognizable phrase” in finding that Respondent
was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using a confusingly similar variation of Complainant’s BANK OF AMERICA mark
within the <bamkofamerica.com>
domain name to ensnare unsuspecting Internet users. Respondent then
redirects the users to its website, which offers sponsored links to various
commercial websites. The Panel infers that Respondent commercially benefits
from this diversion by receiving pay-per-click fees from advertisers when
Internet users follow the links on its website. Such infringement is what the
Policy was intended to remedy. Thus, the Panel finds that Respondent registered
and used the domain name in bad faith under Policy ¶ 4(b)(iv). See 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; see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) finding that if Respondent profits from its diversionary use of
Complainant’s mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that offer
services that compete with Complainant’s services. Respondent’s use of the <bamkofamerica.com> domain name
establishes that Respondent registered the domain name for the purpose of
disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business; see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) finding that the minor degree of variation from Complainant’s marks
suggests that Respondent, Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant’s business; see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) finding that Respondent has diverted business from Complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive”).
Respondent
substituted the letter “m” for the letter “n” in Complainant’s BANK OF AMERICA
mark, resulting in a domain name that is confusingly similar to the mark.
Respondent diverts Internet users who accidentally mistype Complainant’s mark
to Respondent’s competing website. Thus, the Panel finds that Respondent
engaged in the practice of typosquatting, which is evidence that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with 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 Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) finding that
Respondent registered and used the <zonelarm.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii) because the
name was merely a typosquatted version of Complainant’s ZONEALARM
mark. “Typosquatting, itself is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii).”; 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 typosquatted version of
Complainant’s DERMALOGICA mark and stating, “[t]yposquatting
itself is evidence of bad faith registration and use pursuant to Policy
4(a)(iii).”
Respondent’s
registration of the disputed domain name, which is confusingly similar to a
well-known mark in which Complainant has rights, suggests that Respondent knew
of Complainant’s rights in the BANK OF AMERICA mark. Additionally,
Complainant’s trademark registration, on file at the United States Patent and
Trademark Office, gave Respondent constructive notice of Complainant’s mark.
Moreover, Respondent’s knowledge of Complainant’s rights in the mark is
evidenced by the fact that its website provides links to Complainant’s
competitors. Thus, the Panel finds that Respondent chose the <bamkofamerica.com> domain name
based on the distinctive and well-known qualities of Complainant’s mark, which
evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) finding that the “domain names are so obviously connected with
the Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”; see
also Sony Kabushiki Kaisha
v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding bad faith registration
and use where it is “inconceivable that the respondent could make any active
use of the disputed domain name without creating a false impression of
association with the Complainant”; see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
finding that because the link between Complainant’s mark and the content
advertised on Respondent’s website was obvious, Respondent “must have known
about Complainant’s mark when it registered the subject domain name”; see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
names; see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof”).
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 <bamkofamerica.com>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
February 10, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum