DECISION

 

Bank of America Corporation v. Northwest Free Community Access

Claim Number: FA0308000180704

 

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones of Alston & Bird, LLP. Respondent is Northwest Free Community Access, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ebankofamerica.com> registered with Enom, 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 August 7, 2003; the Forum received a hard copy of the Complaint August 11, 2003.

 

On August 13, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <ebankofamerica.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, 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 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 8, 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@ebankofamerica.com by e-mail.

 

A timely Response was received September 8, 2003 by e-mail. However, Respondent did not comply with Rule 5(a) because Respondent did not file a hard copy of the Response.

 

On September 18, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following contentions in this proceeding:

 

1.      Complainant has rights in the BANK OF AMERICA mark.

 

2.      Respondent filed a domain name that is identical to or confusingly similar to Complainant’s BANK OF AMERICA MARK.

 

3.      Respondent has no rights to nor interests in Complainant’s BANK OF AMERICA mark and no permission or license from Complainant to use the mark.

 

4.      Respondent acted in bad faith in registering and using a domain name containing in its entirety Complainant’s mark.

 

B.     Respondent filed a timely communication by email but did not follow this up with a timely filed Response.

 

FINDINGS

Procedural Issue

 

Respondent filed a Response to the Complaint by e-mail September 8, 2003. The Response did not comply with Rule 5(a) because Respondent did not follow the email communication by filing a hard copy of the Response. The Panel reviewed and disregarded Respondent’s deficient submission, which would not have required a change in the rightful outcome of the dispute had it been considered. See Six Continents Hotels, Inc. v. Seweryn Nowak, D2003-0022 (WIPO March 4, 2003) (holding that Respondent’s failure to submit a hard copy of the Response and its failure to include any evidence to support a finding in its favor placed Respondent in a de facto default posture, permitting the Panel to draw all appropriate inferences stated in the Complaint); see also Schott Glas and Nec/Schott Components Corp. v. Necschott, D2001-0127 (WIPO March 14, 2001) (choosing not to consider the Response in light of formal deficiencies); but see Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that "[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process").

 

Complainant established in this proceeding that it has rights in the BANK OF AMERICA mark by registration with the United States Patent and Trademark Office and by continuous use in commerce for some thirty years.  Complainant produced extrinsic evidence to show trademark registration and receipt of Registration Number 853,860, registered July 30, 1968, for banking and financial services.

 

Complainant further asserts that Respondent has no claim, right, or privilege to use Complainant’s mark; and, in fact, Respondent’s communication does not challenge the similarity of the domain name to Complainant’s mark.

 

Complainant also produced evidence that the website at <ebankofamerica.com> offers and accesses, inter alia, various classified ads and other services unrelated to Complainant’s services.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

 

Identical to and/or Confusingly Similar

 

Complainant produced evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BANK OF AMERICA mark (Reg. No. 853,860, registered July 30, 1968) related to banking and financial services.

 

The Panel finds that Complainant established rights in the mark through registration with the USPTO and by use in commerce for some thirty years. See 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); see also 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”).

 

Complainant contends that the domain name registered by Respondent, <ebankofamerica.com>, is confusingly similar to Complainant’s BANK OF AMERICA mark because the domain name appropriates the entire mark and merely adds the letter “e” to the beginning of the mark. Respondent’s addition of the prefix “e” to Complainant’s mark does not significiantly distinguish the disputed domain name from Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding that the domain name <efitnesswholesale.com> is confusingly similar to Complainant’s mark, FITNESS WHOLESALE); see also Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerland.com> is confusingly similar to Complainant’s mark, COMPUTERLAND).

 

Respondent does not dispute Complainant’s substantive arguments with regard to Policy ¶ 4(a)(i).  The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights to or Legitimate Interests

 

Complainant further provides evidence that it has rights to and legitimate interests in the BANK OF AMERICA mark.  Complainant urges that the website at the <ebankofamerica.com> domain name offers and accesses, inter alia, various classified ads and other services unrelated to Complainant’s services.  Respondent claims only such rights as would come from its purchase of the domain name.

 

Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enterss., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

Moreover, Complainant provides evidence that the website at the disputed domain name showed that the domain name registration was for sale, presumably for valuable consideration in excess of Respondent’s out-of-pocket costs. Respondent’s general offer to sell the <ebankofamerica.com> domain name also permits an inference that Respondent lacks rights to or legitimate interests in the domain name. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).

 

Complainant maintains that Respondent is not a bank, investment firm or other financial institution. Furthermore, Complainant asserts that Respondent has no preexisting rights in EBANK OF AMERICA or <ebankofamerica.com>. Therefore, the Panel finds that Respondent failed to establish any rights to or legitimate interests in the disputed domain name in accord with Policy ¶ 4(c)(ii). See 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 Tercent Inc. v. Lee 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).

 

Respondent asserts that it operates a free community classifieds website. Respondent claims that it never sold anything for commercial or financial gain. Respondent filed no Response and Respondent filed no proof to support these claims and does not explain and offer to sell.  The Panel concludes that Respondent failed to demonstrate that the website at <ebankofamerica.com> offers a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant urges that Respondent registered the <ebankofamerica.com> domain name no earlier than June 30, 2003. Due to Complainant’s long years of commercial operation and the legal protection for Complainant’s mark, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s rights in its BANK OF AMERICA mark. The Panel also finds that Respondent’s registration and use of a domain name, despite actual or constructive knowledge of Complainant’s rights in the mark contained in its entirety within the domain name, demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

 

Furthermore, Complainant produced evidence that the website at the <ebankofamerica.com> domain name previously indicated that the domain name registration was for sale. The Panel concluded that Respondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

 

Respondent makes the subjective statement that it registered the disputed domain name in good faith and asserts that it never offered the <ebankofamerica.com> domain name for sale. The Panel has Complainant’s proof to the contrary and has no proof before it to support Respondent’s contentions, even in the deficient communication by email.  The evidence before the Panel supports an inference that the domain name containing Complainant’s mark was registered primarily for resale to Complainant.

 

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 relief shall be GRANTED. 

 

Accordingly, it is Ordered that the <ebankofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: September 30, 2003.

 

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