Bank of America Corporation v. Above.com Domain Privacy
Claim Number: FA1507001629452
Complainant is Bank of America Corporation (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blankofamerica.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2015; the Forum received payment on July 17, 2015.
On July 21, 2015, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <blankofamerica.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 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@blankofamerica.com. Also on July 21, 2015, 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 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 employs the BANK OF AMERICA mark in the marketing of its banking and related financial services.
Complainant holds a registration for the BANK OF AMERICA trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,713,720, registered May 6, 2003).
Respondent registered the domain name <blankofamerica.com> on or about January 1, 2009.
The domain name is confusingly similar to Complainant’s BANK OF AMERICA trademark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its BANK OF AMERICA trademark.
Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use, by means of the disputed domain name.
The domain name resolves to a webpage offering Internet users a phone customer service survey.
Respondent lacks rights to or legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent attempts to profit from its use of the domain name by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 proceeding on the basis of Complainant's undisputed representations pursuant to ¶¶ 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to ¶ 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also 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.”
Complainant has rights in the BANK OF AMERICA trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Australia). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <blankofamerica.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA trademark and service mark. The domain name contains the entire mark and merely adds the generic Top Level Domain (“gTLD”) “.com.” and the letter “l” to create a common misspelling of the word “bank.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in creating a domain name is insufficient to differentiate the domain name from that mark).
See also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <blankofamerica.com> domain name, and that Respondent has not been licensed or otherwise permitted to use Complainant’s BANK OF AMERICA mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Above.com Domain Privacy,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by the <cigaraficionada.com> domain name, and so failed to show that it had acquired rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <blankofamerica.com> domain name resolves to a webpage that prompts Internet users to fill out a customer service survey, from the operation of which Respondent intends to profit. This employment of the domain name is 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 Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that, where the web site resolving from a disputed domain name invites Internet users to complete an online survey, the respondent’s use of the disputed domain name amounts to 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)).
Finally, under this head of the Policy, it is evident that the <blankofamerica.com> domain name is an instance of typo-squatting, by which the creator of a domain name attempts to take advantage of common typing errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business. Typo-squatting is independent evidence that Respondent lacks rights to or legitimate interests in the contested domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a UDRP respondent had “engaged in typo[-]squatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
It also follows from Respondent’s use of the tactic of typo-squatting that Respondent has registered and uses the <blankofamerica.com> domain name in bad faith. See, for example, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a UDRP respondent engaged in typo-squatting, which stood as evidence of bad faith registration and use of a challenged domain name under Policy ¶ 4(a)(iii)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <blankofamerica.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 18, 2015
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