Bank of America Corporation v. Chen Huang
Claim
Number: FA0407000296592
Complainant is Bank of America Corporation (“Complainant”),
represented by Larry C. Jones of Alston & Bird, LLP,
Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC
28280-4000. Respondent is Chen Huang (“Respondent”), P.O. Box
20231, Zengdu, Guangzhou 34264, China 65487.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nationsmorgage.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 15, 2004; the Forum received a hard copy of the
Complaint on July 19, 2004.
On
July 15, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <nationsmorgage.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
July 21, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 10, 2004 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@nationsmorgage.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
August 19, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationsmorgage.com>
domain name is confusingly similar to Complainant’s NATIONS marks.
2. Respondent does not have any rights or
legitimate interests in the <nationsmorgage.com> domain name.
3. Respondent registered and used the <nationsmorgage.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bank of America Corporation, was formed in September 1998 as the result of a series
of mergers between Complainant’s predecessors BankAmerica and a successor of
NationsBank. Complainant is in the
business of providing a wide range of financial services in various parts of
the world.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
for the NATIONS marks. The NATIONS
marks include the marks NATIONS (Reg. No. 2,373,140 issued August 1, 1998),
NATIONSBANK (Reg. No. 1,976,832 issued May 28, 1996), NATIONS CREDIT (Reg. No.
1,870,786 issued December 27, 1994), NATIONS FUNDS (Reg. No. 2,746,928 issued
August 5, 2003) and many others.
Complainant has
used the NATIONS marks continuously and extensively since at least as early as
1994 in advertising promotions and in providing its financial services. Complainant also owns numerous domain name
registrations that correspond to many of Complainant’s NATIONS marks, and
Complainant uses these websites to promote and provide its products and
services online.
Respondent
registered the <nationsmorgage.com> domain name on October 16,
2003 and is using the disputed domain name to redirect Internet users to a
website that hosts a search engine and provides links to a variety of websites
that offer mortgage services and suggested searches for mortgages and other
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
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 has
established in this proceeding that it has rights in the NATIONS marks through
registration with the United States Patent and Trademark Office and by
continuous use of its marks in commerce for at least the last ten years. 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 <nationsmorgage.com>
domain name registered by Respondent is confusingly similar to Complainant’s
NATIONS marks because the domain name incorporates Complainant’s NATIONS mark
in its entirety, adding only a misspelling of the generic or descriptive term
“mortgage.” Furthermore, the generic
term describes an aspect of Complainant’s financial business. In fact, many of Complainant’s registered
NATIONS marks are a combination of the NATIONS mark and a term describing its
financial business. Thus, the mere
addition of a generic or descriptive word to Complainant’s registered mark does
not negate the confusing similarity of Respondent’s domain name pursuant to
Policy ¶ 4(a)(i). See Magnum
Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that
confusing similarity under the Policy is decided upon the inclusion of a
trademark in the domain name rather than upon the likelihood of confusion test
under U.S. trademark law); see also Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to
Complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which Complainant is engaged, does not take
the disputed domain name out of the realm of confusing similarity).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <nationsmorgage.com>
domain name, which contains Complainant’s entire NATIONS mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and legitimate
interests in the disputed domain name.
In fact, once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to show that it does have such
rights or legitimate interests in the domain name pursuant to Policy ¶
4(a)(ii). See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
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 with respect to the domain name, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent never submitted a response or
provided the Panel with evidence to suggest otherwise).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. 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) (holding that Respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Respondent is
using the <nationsmorgage.com> domain name to redirect Internet
users to a website that hosts a search engine and features links to a variety
of websites that offer the same type of goods and services offered by
Complainant. Respondent’s use of a
domain name that is confusingly similar to Complainant’s NATIONS marks to
redirect Internet users interested in Complainant’s products and services to a
commercial website that offers a search engine and links unrelated to
Complainant’s products and services is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that Respondent’s diversionary use of Complainant’s marks to send Internet
users to a website which displayed a series of links, some of which linked to
competitors of Complainant, was not a bona fide offering of goods or services);
see also Disney Enters., 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 Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links
to other websites, is not a legitimate use of the domain names).
Finally,
Respondent offered no evidence and nothing in the record suggests that
Respondent is commonly known by the <nationsmorgage.com> domain
name. Furthermore, Complainant has not
licensed Respondent to use the NATIONS marks.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <nationsmorgage.com> domain name,
containing Complainant’s NATIONS mark in its entirety, for Respondent’s
commercial gain. The disputed domain
name diverts Internet users who seek Complainant’s NATIONS marks to
Respondent’s commercial website through the use of a domain name that is
confusingly similar to Complainant’s marks.
Furthermore, Respondent is unfairly and opportunistically benefiting
from the goodwill associated with Complainant’s NATIONS marks. Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use pursuant
to 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 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 CMG Worldwide, Inc. v.
Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that
Respondent’s use of the VINCE LOMBARDI mark to divert Internet users to its
commercial website constituted bad faith use and registration of the disputed
domain name).
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name, additional factors can also be
used to support findings of bad faith registration and use. 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) (“[T]he examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the <nationsmorgage.com> domain name, which
incorporates Complainant’s well-known NATIONS mark, adding only a generic term,
suggests that Respondent knew of Complainant’s rights in the NATIONS mark. Furthermore, the generic or descriptive term
incorporated in the domain name describes Complainant’s business. Thus the Panel finds that Respondent chose
the <nationsmorgage.com> domain name based on the distinctive and
well-known qualities of Complainant’s marks.
See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); 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 <nationsmorgage.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY
Dated: September 2, 2004