Bank of America Corporation v. P
Claim Number: FA0211000131213
PARTIES
Complainant
is Bank of America Corporation,
Charlote, NC (“Complainant”) represented by Larry C. Jones, of Alston
& Bird, LLP. Respondent is P, Seattle, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bank0famerica.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 7, 2002; the Forum received a hard copy of the
Complaint on November 8, 2002.
On
November 14, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the
domain name <bank0famerica.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. verified that
Respondent is bound by the Tucows, Inc. registration agreement and that
Respondent 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
November 15, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 5, 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 postmaster@bank0famerica.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
December 26, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
The
<bank0famerica.com> domain
name is confusingly similar to Complainant’s BANK OF AMERICA mark. Respondent has no rights or legitimate
interests in the <bank0famerica.com>
domain name. Respondent registered
and used the <bank0famerica.com> domain
name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Bank of America Corporation,
is the largest consumer bank in the United States and one of the world’s
best-known financial institutions.
Complainant uses the BANK OF AMERICA mark to denote its banking and
financial services. The BANK OF AMERICA
mark has been registered with the United States Patent and Trademark Office
(“USPTO”) since 1968 (Reg. No. 853,860).
Complainant advertises and promotes
its financial-related services worldwide by way of the BANK OF AMERICA
mark. Complainant spends a significant
amount of resources in connection with its BANK OF AMERICA promotional
efforts. In addition, Complainant
operates a website at <bankofamerica.com>. At this website Complainant further advertises a wide variety of
financial services that it offers under the BANK OF AMERICA mark.
Respondent registered the <bank0famerica.com> domain name
on October 24, 2002. Respondent has
since used the domain name to divert Internet traffic to the “Screen Prize
2002” website. This website promotes a
“Screenwriting Competition.”
Complainant learned through communications with Respondent that the <bank0famerica.com>
domain name resulted in “30 hits per day” for the associated “Screen Prize
2002” website. Furthermore, Respondent
offered to sell the <bank0famerica.com>
domain name registration rights to Complainant for $750.
DISCUSSION
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
will draw such inferences ass the Panel 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.
Complainant established in this
proceeding that it has rights in the BANK OF AMERICA mark through proof of
trademark registration with the USPTO.
The domain name registered by Respondent, <bank0famerica.com>, is nearly identical to Complainant’s
BANK OF AMERICA mark. The only
difference is that the “o” in the mark is changed to the numeral “0.” This is a common technique used by
typosquatters to capture the run off of mistyped Uniform Resource Locator
(“URL”) entries. The majority of
Internet users most likely will successfully type the BANK OF AMERICA mark in
the URL. By substituting the numeral
“0” in the <bank0famerica.com> domain
name, Respondent has not created a domain name that is distinguished from
Complainant’s BANK OF AMERICA mark. The
domain name would be pronounced the same as Complainant’s mark. Therefore, since the <bank0famerica.com> domain name is a typographical error of
the BANK OF AMERICA mark and is phonetically identical to the mark,
Respondent’s domain name is confusingly similar to Complainant’s mark. See Oxygen Media, LLC v. Primary Source,
D2000-0362 (WIPO June 19, 2000) (finding that the domain name
<0xygen.com>, with zero in place of letter “O,” “appears calculated to
trade on Complainant’s name by exploiting likely mistakes by users when
entering the url address”); see also Hewlett-Packard
Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that
a domain name that is phonetically identical to Complainant’s mark satisfies ¶
4(a)(i) of the Policy).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has not challenged the
Complaint. Complainant fulfilled its
burden of submitting a prima facie Complaint, which creates a
presumption that Respondent has no rights or legitimate interests in a domain
name bearing Complainant’s mark. Respondent was afforded the opportunity to
rebut that presumption by articulating rights or legitimate interests in the <bank0famerica.com> domain name
but did not submit a Response. The
Panel therefore presumes that Respondent has no such rights or legitimate
interests based on Complainant’s unchallenged prima facie showing in the
Complaint. 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 Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, Respondent’s failure to
contest Complainant’s allegations allows the Panel to accept all of
Complainant’s allegations as true, and the Panel is permitted to draw all
reasonable inferences in Complainant’s favor.
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 uses the <bank0famerica.com> domain name to divert unsuspecting
Internet users who mistype the BANK OF AMERICA mark to a website wholly
unrelated to Complainant. This use of a
confusingly similar domain name is unauthorized by Complainant. Presumably, Respondent benefits from the
increased traffic, “30 hits per day,” to its “Screen Prize 2002” website. Respondent’s diversionary use of the <bank0famerica.com> domain name
does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it does not represent noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent
diverts consumers to its own website by using Complainant’s trademarks); see
also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempts to profit from Complainant’s
mark by redirecting Internet traffic to its own website).
As previously mentioned, Respondent’s use
of the confusingly similar <bank0famerica.com>
domain name is not authorized by Complainant. Complainant has never granted Respondent permission to use its
BANK OF AMERICA mark for any purpose. Respondent opportunistically ensnares
Internet users to Respondent’s website.
Further, Respondent is identified as “P” but the email address listed on
the WHOIS page denotes the appropriate contact to be Jeremy Stamper, the
individual Complainant contacted to give notice of the infringing domain
name. Hence, no evidence suggests that
Respondent is commonly known by the <bank0famerica.com>
domain name and Policy ¶ 4(c)(ii) will not assist Respondent. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent uses the <bank0famerica.com> domain name to route Internet traffic to
its “Screen Prize 2002” website. The <bank0famerica.com> domain name
is comprised of Complainant’s BANK OF AMERICA mark with a typographical error
of “0” in lieu of the “OF”. Thus,
traffic that is routed to Respondent’s website is comprised of Internet users
who are searching for Complainant’s BANK OF AMERICA mark but mistype the mark
in the browser. These facts permit the
finding that Respondent knew of the value of Complainant’s BANK OF AMERICA mark
and made a calculated decision to trade off of the mark’s goodwill. It is particularly egregious and clear that
Respondent sought to take advantage of typos because the letter “o” and the
numeral “0” are in close proximity on the keyboard, creating a higher chance of
typographical error. Therefore,
Respondent’s opportunistic use of the <bank0famerica.com>
domain name and apparent knowledge of Complainant’s interest in the BANK OF
AMERICA mark support a finding that Respondent acted in bad faith under Policy
¶ 4(a)(iii). See Singapore Airlines Ltd v. P & P
Servicios de Communicacion S.L.,
D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so
obviously connected with a well-known airline that its very registration and
use by someone with no connection to the airline suggests opportunistic bad
faith. Indeed, it is hard to imagine a
more blatant exercise in ‘cybersquatting.’”); see also Household Int’l, Inc. v. Cyntom Enter.,
FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a
well-known business name for no particularly good reason undermines any claim
to legitimate interest, so it may also support an inference of a bad-faith
attempt to use the name to harass or exploit its legitimate owner… Respondent, if he ever was serious in the
registration of this domain name, must have relied on the good chance he would
attract [Complainant’s] customers”).
Respondent’s offer to sell the
registration rights in the <bank0famerica.com>
domain name for $750 also supports a finding of bad faith. The Panel may infer that $750 is in excess
to any out-of-pocket expenses Respondent had in relation to the <bank0famerica.com> domain
name. Furthermore, Respondent has not
come forward to defend its sales offer and to provide any evidence that
justifies such a price. Respondent’s price is further evidence of its
motivation to profit from the confusingly similar domain name. Hence, Respondent’s actions demonstrate bad
faith registration and use under Policy ¶ 4(b)(i). See Little Six, Inc
v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
Respondent's offer to sell the domain name at issue to Complainant was evidence
of bad faith); see also Dynojet
Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding
that Respondent demonstrated bad faith when he requested monetary compensation
beyond out of pocket costs in exchange for the registered domain name).
Furthermore, Respondent’s apparent
commercial benefit by use of the <bank0famerica.com> domain name
represents bad faith. By the nature of
the subject domain name being a typographically erroneous version of
Complainant’s BANK OF AMERICA mark, Internet users are more likely to be
confused regarding Complainant’s affiliation with the resulting website. Thus, Respondent’s conduct represents bad
faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain); see also Kmart
v. Kahn, 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)).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
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
<bank0famerica.com> be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 6, 2003.
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page