Bank of America Corporation v. Admin c/o
LaPorte Holdings
Claim
Number: FA0504000464392
Complainant is Bank of America Corporation (“Complainant”),
represented by Randel S. Springer, of Womble Carlyle Sandridge & Rice, PLLC, One West Fourth Street, Winston-Salem, NC 27101. Respondent is Admin c/o LaPorte Holdings (“Respondent”), 5482 Wilshire Blvd. #1928,
Los Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <fleetbannk.com>, <fleethomelinkonlinebanking.com>,
<banikofamerica.com>, <banxofamerica.com>, <fleetaccesscard.com>,
<flletbank.com>, <fleetcreditcardaccess.com>, <fleetapplay.com>,
<fleetaply.com>, and <fleetapplt.com>, registered
with Nameking.com, Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 19, 2005.
On
April 16, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <fleetbannk.com>, <fleethomelinkonlinebanking.com>,
<banikofamerica.com>, <banxofamerica.com>, <fleetaccesscard.com>,
<flletbank.com>, <fleetcreditcardaccess.com>, <fleetapplay.com>,
<fleetaply.com>, and <fleetapplt.com> are registered
with Nameking.com, Inc. and that Respondent is the current registrant of the
names. Nameking.com, Inc. has verified
that Respondent is bound by the Nameking.com, 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
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 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@fleetbannk.com,
postmaster@fleethomelinkonlinebanking.com,
postmaster@banikofamerica.com, postmaster@banxofamerica.com, postmaster@fleetaccesscard.com,
postmaster@flletbank.com,
postmaster@fleetcreditcardaccess.com, postmaster@fleetapplay.com,
postmaster@fleetaply.com, and postmaster@fleetapplt.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fleetbannk.com>,
<fleethomelinkonlinebanking.com>, <banikofamerica.com>,
<banxofamerica.com>, <fleetaccesscard.com>, <flletbank.com>,
<fleetcreditcardaccess.com>, <fleetapplay.com>, <fleetaply.com>,
and <fleetapplt.com> domain names are confusingly similar to
Complainant’s FLEET, FLEET BANK, and BANK OF AMERICA marks.
2. Respondent does not have any rights or
legitimate interests in the <fleetbannk.com>, <fleethomelinkonlinebanking.com>,
<banikofamerica.com>, <banxofamerica.com>, <fleetaccesscard.com>,
<flletbank.com>, <fleetcreditcardaccess.com>, <fleetapplay.com>,
<fleetaply.com>, and <fleetapplt.com> domain names.
3. Respondent registered and used the <fleetbannk.com>,
<fleethomelinkonlinebanking.com>, <banikofamerica.com>,
<banxofamerica.com>, <fleetaccesscard.com>, <flletbank.com>,
<fleetcreditcardaccess.com>, <fleetapplay.com>, <fleetaply.com>,
and <fleetapplt.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Bank
of America Corporation, is the second largest banking company in the
world. Complainant operates over 5,700
banking centers in the United States.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the BANK OF AMERICA mark (e.g., Reg. No. 2,488,156 issued
September 11, 2001). Complainant also
holds trademark registrations for the FLEET mark (Reg. No. 1,258,836 issued
November 22, 1983), and FLEET BANK mark (Reg. No. 2,332,096 issued March, 21, 2000).
Respondent
registered the <fleetbannk.com> domain name on September 7, 2004,
the <fleethomelinkonlinebanking.com> domain name on October 25,
2004, the <banikofamerica.com> domain name on October 5, 2004, the
<banxofamerica.com> domain name on October 13, 2004, the <fleetaccesscard.com>
domain name on May 16, 2004, the <flletbank.com> domain name on
November 22, 2002, the <fleetcreditcardaccess.com>
domain name on June 21, 2004, the <fleetapplay.com> domain name on
May 10, 2004, the <fleetaply.com> domain name on November 18,
2004, and the <fleetapplt.com> domain name on March 11, 2004. Respondent’s domain names do not resolve to
active websites.
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
established with extrinsic proof in this proceeding that it has rights in the
FLEET, FLEET BANK, and BANK OF AMERICA marks through registration of the marks
with the United States Patent and Trademark Office. 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. The Respondent has the burden of refuting this assumption).
Respondent’s <fleethomelinkonlinebanking.com>,
<fleetaccesscard.com>, <fleetcreditcardaccess.com>, <fleetapplay.com>,
<fleetaply.com>, and <fleetapplt.com> domain names
are confusingly similar to Complainant’s FLEET mark because the domain names
fully incorporate Complainant’s mark and merely add generic or descriptive
words to the mark. Specifically.
Respondent’s domain names add the phrases “home link online banking,” “access
card,” and “credit card access” to Complainant’s FLEET mark, which are related
to Complainant’s business.
Additionally, Respondent’s domain names add the misspelled words
“applay,” “aply,” and “applt” to Complainant’s mark. These additions of generic
or descriptive words to Complainant’s mark do not negate the confusingly
similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the 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 the complainant’s HOYLE mark, and that the
addition of “casino,” a generic word describing the type of business in which
the complainant is engaged, does not take the disputed domain name out of the
realm of confusing similarity); see also Compaq Info. Techs.
Group, L.P. v. Seocho, FA 103879
(Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to the complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark).
Respondent’s
<fleetbannk.com> and <flletbank.com> domain
names are confusingly similar to Complainant’s FLEET BANK mark because the
domain names incorporate Complainant’s mark in its entirety and merely add the
letter “n” to the word “bank” in the <fleetbannk.com> domain
name and replace the letter “e” with the letter “l” in the <flletbank.com>
domain name. Respondent’s <banikofamerica.com> and <banxofamerica.com>
domain names are confusingly similar to Complainant’s BANK OF AMERICA mark
because the domain names incorporate Complainant’s mark in its entirety and
merely add the letter “i” to the word “bank” in the <banikofamerica.com>
domain name and replace the letter “k” with the letter “x” in the <banxofamerica.com>
domain name. The addition of extra
letters and the replacement of letters in Respondent’s domain names does not
negate the confusingly similar aspects of Respondent’s domain names pursuant to
Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such generic typos do not change the
respondent’s infringement on a core trademark held by the complainant); see
also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks).
Additionally,
Respondent’s disputed domain names are confusingly similar to Complainant’s
registered marks because the domain names incorporate the dominant
Complainant’s marks and add the generic top-level domain “.com.” The addition of generic top-level domains
does not negate the confusing similarity between Respondent’s domain names and
Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to the complainant's
registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> is plainly identical to the
complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed
domain names that contain variations of Complainant’s FLEET, FLEET BANK, and
BANK OF AMERICA marks. The burden
shifts to Respondent to show that it does have rights or legitimate interests
once Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where the complainant has asserted that the
respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on the 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 the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that
under certain circumstances the mere assertion by the complainant that the
respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to the respondent to demonstrate that such a rights or
legitimate interests exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Where 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 Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response the panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Additionally, Respondent has made no use of the disputed
domain names. Simply registering the domain names is not sufficient to
establish rights and legitimate interests. When Respondent has made no use of a
disputed domain names, it can neither be said to be being used for a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor for legitimate
noncommercial or fair use under Policy
¶ 4(c)(iii). See Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where the respondent failed to submit a response to the
complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy.”); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no
rights in the domain name where the respondent claimed to be using the domain
name for a non-commercial purpose but had made no actual use of the domain
name).
Furthermore, no
evidence submitted indicates that Respondent has a substantial affiliation
with, or is known by the disputed
domain names.
Complainant has established itself as the sole holder of all rights and
legitimate interests in the FLEET, FLEET BANK, and BANK OF AMERICA
marks. Since Respondent has not come forward with a viable alternative supporting its use of Complainant’s marks and does not have
authorization or consent to use the marks, the Panel may accept Complainant’s
proposition that Respondent has no rights or legitimate interests in the domain
names under Policy ¶ 4(c)(ii). See 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); 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").
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
made no use of the disputed domain names. The failure of Respondent to make use of the
disputed domain names constitutes passive holding and, thus, the Panel finds
that Respondent’s registration and use of the disputed domain names is in bad faith pursuant
to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith).
The Panel finds
that there is no conceivable way Respondent could use the disputed domain names
such that they would not infringe on Complainant’s FLEET, FLEET BANK, and BANK
OF AMERICA marks and, therefore, it is illogical to await Respondent’s use of
the domain name to find bad faith use. See Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(a)(iii) even though the respondent has not used the domain name because “[i]t
makes no sense whatever to wait until it actually ‘uses’ the name, when
inevitably, when there is such use, it will create the confusion described in
the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
the respondent made no use of the domain name in question and there are no
other indications that the respondent could have registered and used the domain
name in question for any non-infringing purpose); see also Red Bull GmbH
v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s
expected use of the domain name <redbull.org> would lead people to
believe that the domain name was connected with the complainant, and thus is
the equivalent to bad faith use); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec.
9, 2000) (finding bad faith registration and use where it is “inconceivable
that the respondent could make any active use of the disputed domain names
without creating a false impression of association with the complainant”).
Furthermore,
Respondent’s registration of the disputed domain names, containing confusing
similar versions of Complainant’s well-known FLEET, FLEET BANK, and BANK OF
AMERICA marks, suggests that Respondent knew of Complainant’s rights in the
marks. There is no evidence to suggest that
Respondent has any connection to any products or services bearing these
variations on Complainant’s marks.
Moreover, constructive knowledge of the mark may be inferred because the
marks are/were registered with the United States Patent and Trademark Office
prior to Respondent’s registration of the domain names. Thus, the Panel finds that Respondent
registered and used the disputed domain names based on the distinctive and
well-known qualities of Complainant’s marks.
See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000)
(finding that the fact “that the respondent chose to register a well known mark
to which he has no connections or rights indicates that he was in bad faith
when registering the domain name at issue”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“[C]omplainant’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 <fleetbannk.com>, <fleethomelinkonlinebanking.com>,
<banikofamerica.com>, <banxofamerica.com>, <fleetaccesscard.com>,
<flletbank.com>, <fleetcreditcardaccess.com>, <fleetapplay.com>,
<fleetaply.com>, and <fleetapplt.com> domain names be
TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 31, 2005
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