Bank of America Corporation v. domain
chronicle
Claim
Number: FA0308000178817
Complainant is Bank of America Corporation,
Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones of Alston & Bird, LLP. Respondent is domain chronicle, Xiamen, CHINA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <eaglsbankofamerica.com>, registered with Onlinenic,
Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 4, 2003; the Forum received a hard copy of the
Complaint on August 6, 2003.
On
August 4, 2003, Onlinenic, Inc., confirmed by e-mail to the Forum that the
domain name <eaglsbankofamerica.com> is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc.
verified that Respondent is bound by the Onlinenic, Inc. 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
August 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 27, 2003 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@eaglsbankofamerica.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
September 10, 2003, 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 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<eaglsbankofamerica.com>, is confusingly similar to Complainant’s
EAGLS and BANK OF AMERICA marks.
2. Respondent has no rights or legitimate
interests in the <eaglsbankofamerica.com> domain name.
3. Respondent registered and used the <eaglsbankofamerica.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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 holds
several registrations for the BANK OF AMERICA mark throughout the world,
including U.S. Patent and Trademark Office Registration No. 853,860, issued on
July 30, 1968. Complainant also holds registrations for the EAGLS mark,
including U.S. Patent and Trademark Office Registration No. 2,376,711, issued
on August 15, 2000.
Since 1928,
Complainant and its predecessors in interest have used the BANK OF AMERICA mark
in commerce to promote, advertise and provide banking and financial services.
Complainant has also extensively used the EAGLS mark in commerce to promote its
financial services. On the Internet, Complainant uses the BANK OF AMERICA mark
in the <bankofamerica.com> domain name to promote Complainant’s wide
variety of financial services.
Respondent,
domain chronicle, registered the <eaglsbankofamerica.com> domain
name on March 10, 2003, without license or authorization to use Complainant’s
EAGLS or BANK OF AMERICA marks for any purpose. Respondent uses the disputed
domain name to direct Internet users to a search engine that features
hyperlinks to various providers of financial services. Additional pop-up
advertisements are also displayed, including some for financial services.
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 will draw such
inferences as the Panel 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 has
established in this proceeding that it has rights in the EAGLS and BANK OF
AMERICA marks through registration of those marks with the U.S. Patent and
Trademark Office, as well as through widespread and continuous use of those
marks in commerce.
The domain name
registered by Respondent, <eaglsbankofamerica.com>, is confusingly similar to Complainant’s
EAGLS and BANK OF AMERICA marks. It merely combines two of Complainant’s
registered marks and then removes the spaces between the words of the BANK OF
AMERICA mark. After this cosmetic and inconsequential change, the disputed
domain name remains confusingly similar to both of the underlying marks. See
Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined Complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(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”).
Accordingly, the
Panel finds that the <eaglsbankofamerica.com> domain name is confusingly similar to
Complainant’s EAGLS and BANK OF AMERICA marks under Policy ¶ 4(a)(i).
Complainant established in this proceeding that it has rights to and
legitimate interests in the EAGLS and BANK OF AMERICA marks. Respondent uses a combination of
Complainant’s EAGLS and BANK OF AMERICA marks to redirect Internet users to
revenue-producing advertisements, many of them advertising the services of
Complainant’s competitors. This use of the disputed domain name is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). Thus, Respondent’s conduct is not protected under the Policy. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name); see also Bank of Am. Corp. v.
Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding
holding that Respondent’s use of infringing domain names to direct Internet
traffic to a search engine website that hosted pop-up advertisements was
evidence that it lacked rights or legitimate interests in the domain name).
Given the fame of Complainant’s BANK OF AMERICA mark and the arbitrary
nature of the EAGLS mark, the Panel infers that Respondent is not commonly
known by the disputed domain name, rendering Policy ¶ 4(c)(ii) inapplicable to
Respondent. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding that Respondent failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net> domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959); 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").
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<eaglsbankofamerica.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered a domain name that infringed on not one, but two of Complainant’s
registered marks. Such registration demonstrates that Respondent knew of
Complainant’s rights in its family of marks when it registered the disputed
domain name and that Respondent acted in bad faith in registering the disputed
domain name. Respondent’s subsequent use of the domain name, which takes
advantage of the goodwill surrounding Complainant’s marks to siphon Internet
users to advertisements, also constitutes evidence that the domain name is
being used in bad faith. See 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”); see also
Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding
that where a mark is so obviously connected with well-known products, its very
use by someone with no connection to these products can evidence opportunistic
bad faith).
The Panel thus
finds that Respondent registered and used the <eaglsbankofamerica.com>
domain name in bad faith, and that
Policy ¶ 4(a)(iii) is 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 <eaglsbankofamerica.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 22, 2003.
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