Bank of America Corporation v. Domaincar
Claim Number: FA0603000661292
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 Domaincar (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bankofamerisca.com>, <bankamericva.com>, <bankofamericapersonalloans.com>, <bankamericacredit.com>, <bankofamericadiscounts.com>, <bankofamericar.com>, <bankofameracia.com>, <bankofamercai.com>, <bankofamerica-associate.com>, <bankofamericabankingonline.com>, <wwwbankoffamerica.com>, <bankofeamerica.com>, <bankcfamerica.com>, <bancofamericaprivacysource.com> and <banclofamerica.com>. The <bankofamerisca.com>, <bankamericacredit.com>, <bankofamericar.com>, <bankofeamerica.com>, <bankcfamerica.com> and <banclofamerica.com> domain names are registered with Belgiumdomains, Llc; the <bankamericva.com>, <bankofamercai.com>, <wwwbankoffamerica.com> and <bancofamericaprivacysource.com> domain names are registered with Domaindoorman, Llc; and the <bankofamericapersonalloans.com>, <bankofamericadiscounts.com>, <bankofameracia.com>, <bankofamerica-associate.com> and <bankofamericabankingonline.com> domain names are registered with Capitoldomains, Llc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2006.
On March 16, 2006, Belgiumdomains, Llc, confirmed by e-mail to the National Arbitration Forum that the <bankofamerisca.com>, <bankamericacredit.com>, <bankofamericar.com>, <bankofeamerica.com>, <bankcfamerica.com> and <banclofamerica.com> domain names are registered with Belgiumdomains, Llc and that Respondent is the current registrant of the names. Belgiumdomains, Llc has verified that Respondent is bound by the Belgiumdomains, Llc 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 March 16, 2006, Domaindoorman, Llc, confirmed by e-mail to the National Arbitration Forum that the <bankamericva.com>, <bankofamercai.com>, <wwwbankoffamerica.com> and <bancofamericaprivacysource.com> domain names are registered with Domaindoorman, Llc and that Respondent is the current registrant of the names. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 March 16, 2006, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <bankofamericapersonalloans.com>, <bankofamericadiscounts.com>, <bankofameracia.com>, <bankofamerica-associate.com> and <bankofamericabankingonline.com> domain names are registered with Capitoldomains, Llc and that Respondent is the current registrant of the names. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc 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 March 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 2006 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@bankofamerisca.com, postmaster@bankamericva.com, postmaster@bankofamericapersonalloans.com, postmaster@bankamericacredit.com, postmaster@bankofamericadiscounts.com, postmaster@bankofamericar.com, postmaster@bankofameracia.com, postmaster@bankofamercai.com, postmaster@bankofamerica-associate.com, postmaster@bankofamericabankingonline.com, postmaster@wwwbankoffamerica.com, postmaster@bankofeamerica.com, postmaster@bankcfamerica.com, postmaster@bancofamericaprivacysource.com and postmaster@banclofamerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <bankofamerisca.com>, <bankamericva.com>, <bankofamericapersonalloans.com>, <bankamericacredit.com>, <bankofamericadiscounts.com>, <bankofamericar.com>, <bankofameracia.com>, <bankofamercai.com>, <bankofamerica-associate.com>, <bankofamericabankingonline.com>, <wwwbankoffamerica.com>, <bankofeamerica.com>, <bankcfamerica.com>, <bancofamericaprivacysource.com> and <banclofamerica.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <bankofamerisca.com>, <bankamericva.com>, <bankofamericapersonalloans.com>, <bankamericacredit.com>, <bankofamericadiscounts.com>, <bankofamericar.com>, <bankofameracia.com>, <bankofamercai.com>, <bankofamerica-associate.com>, <bankofamericabankingonline.com>, <wwwbankoffamerica.com>, <bankofeamerica.com>, <bankcfamerica.com>, <bancofamericaprivacysource.com> and <banclofamerica.com> domain names.
3. Respondent registered and used the <bankofamerisca.com>, <bankamericva.com>, <bankofamericapersonalloans.com>, <bankamericacredit.com>, <bankofamericadiscounts.com>, <bankofamericar.com>, <bankofameracia.com>, <bankofamercai.com>, <bankofamerica-associate.com>, <bankofamericabankingonline.com>, <wwwbankoffamerica.com>, <bankofeamerica.com>, <bankcfamerica.com>, <bancofamericaprivacysource.com> and <banclofamerica.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bank of America Corporation, is the world’s
second largest banking company with more than 5,800 banking centers in
twenty-nine states and international offices in thirty-five countries. Complainant’s operations serve more than one
in four households in the United States.
Complainant owns numerous trademark registrations for the
BANK OF AMERICA mark throughout the world, including with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 853,860 issued July 30, 1968)
and trademark authorities in Panama (Reg. No. 12,966 issued January 18,
1971). Complainant holds registrations
for several domain names containing its mark, including
<bankofamerica.com>, where Complainant’s website has 14.3 million active
users.
Respondent registered the disputed domain names between October 22, 2005 and January 2, 2006. All of the domain names resolve to generic search engine websites with directory links to third-party websites, some of which compete with Complainant.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth 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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
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 provided evidence of its registrations for the BANK OF AMERICA mark with the USPTO and with trademark authorities in Panama, Respondent’s purported location. The Panel finds that Complainant’s registrations sufficiently establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Dermalogica, Inc. v. Gerassi, FA 624530 (Nat. Arb. Forum Feb. 22, 2006) (finding that the complainant had rights in the DERMALOGICA mark through its registration of the mark with the USPTO).
The disputed domain names are confusingly similar to Complainant’s BANK OF AMERICA mark in spite of the slight changes to the mark within each domain name. The <bankofamericapersonalloans.com>, <bankofamericadiscounts.com>, <bankofamerica-associate.com> and <bankofamericabankingonline.com> domain names incorporate Complainant’s BANK OF AMERICA mark in its entirety with the additions of common or descriptive terms and a hyphen. These changes are not sufficient to distinguish the domain name from the mark. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). The <bankofamerisca.com>, <bankamericva.com>, <bankamericacredit.com>, <bankofamericar.com>, <bankofameracia.com>, <bankofamercai.com>, <wwwbankoffamerica.com>, <bankofeamerica.com>, <bankcfamerica.com>, <bancofamericaprivacysource.com> and <banclofamerica.com> domain names differ from Complainant’s mark with the addition of letters, substitution of letters and omission of the term “of.” None of the changes made to Complainant’s registered BANK OF AMERICA mark are sufficient to overcome Complainant’s showing of confusing similarity pursuant to Policy ¶ 4(a)(i). See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark); 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).
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden of establishing a prima
facie case that Respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii).
Once Complainant has satisfied its burden, that burden falls on
Respondent to provide evidence of its rights or legitimate interests under
Policy ¶ 4(c). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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 “concrete evidence that it has rights to or legitimate interests in the
domain name at issue”). Due to
Respondent’s failure to Respond, the Panel may presume that Respondent has
failed to meet its burden. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel chooses to evaluate whether the evidence provided
supports a finding of Respondent’s rights or legitimate interests under Policy
¶ 4(c).
Complainant asserts that Respondent is not connected to or affiliated with Complainant or licensed to use Complainant’s BANK OF AMERICA mark in any way. Furthermore, nothing in the record, including the WHOIS information indicates that Respondent is commonly known by any of the disputed domain names. In Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel found the respondent was not commonly known by the disputed domain name where the WHOIS information made no such indication and the complainant had not licensed or authorized the respondent to use the domain name. Thus with no evidence in the record to rebut Complainant’s assertions, the Panel determines that Respondent has not established rights or legitimate interests in the disputed domain names under 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").
According to the Complaint, Respondent is using all of the
disputed domain names in connection with directory websites, which Respondent
hosts to earn revenue from misdirected Internet users. In Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the respondent was using domain
names incorporating the complainant’s DISNEY mark to redirect Internet users to
a search engine website that that included links to various commercial
websites. The panel in that case found
that it could infer that the respondent’s diversionary use was for profit,
which did not constitute rights or legitimate interests under Policy ¶ 4(c)(i)
or (iii). Therefore, the Panel does not
consider it a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶ 4(c)(iii), where Respondent is using Respondent’s BANK OF AMERICA
mark and numerous variations to divert Internet users for Respondent’s benefit. See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel infers that Respondent
receives referral fees for connecting Internet users to third-party commercial
websites via the links on its directory websites. Respondent’s use of confusingly similar versions of Complainant’s
BANK OF AMERICA mark to attract Internet users to its website where Respondent
displays links to Complainant’s competitors for Respondent’s profit suggests
that Respondent intended to benefit from the goodwill associated with
Complainant’s mark. Respondent’s
attempt to gain from possible confusion resulting from its use of variations of
Complainant’s mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19,
2003) (“Respondent's prior use of the <mailonsunday.com> domain name is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamerisca.com>, <bankamericva.com>, <bankofamericapersonalloans.com>, <bankamericacredit.com>, <bankofamericadiscounts.com>, <bankofamericar.com>, <bankofameracia.com>, <bankofamercai.com>, <bankofamerica-associate.com>, <bankofamericabankingonline.com>, <wwwbankoffamerica.com>, <bankofeamerica.com>, <bankcfamerica.com>, <bancofamericaprivacysource.com> and <banclofamerica.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 2, 2006
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