Bank of America Corporation v. Azra Khan
Claim Number: FA0209000124515
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston
& Bird, LLP. Respondent is Azra Khan, Rawalpindi, PAKISTAN
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwbankamerica.com>,
registered with Iholdings.com.
PANEL
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 4, 2002; the Forum received a hard copy of the
Complaint on September 9, 2002.
On
September 6, 2002, Iholdings.com confirmed by e-mail to the Forum that the
domain name <wwwbankamerica.com>
is registered with Iholdings.com and that Respondent is the current registrant
of the name. Iholdings.com has verified
that Respondent is bound by the Iholdings.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
September 9, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 30, 2002 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@wwwbankamerica.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
October 22, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. Respondent’s <wwwbankamerica.com>
domain name is confusingly similar to Complainant’s registered BANK OF AMERICA
and BANKAMERICA marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwbankamerica.com> domain name.
3. Respondent registered and used the <wwwbankamerica.com>
domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant, Bank of America Corp.,
represents the largest consumer bank in the United States and one of the
world’s most well-known financial institutions. Complainant has obtained
several registrations of its BANK OF AMERICA and BANKAMERICA marks throughout
the world, including U.S. Patent and Trademark Office (“USPTO”) Service Mark
Reg. Nos. 853,860 (issued July 30, 1968) and 965,288 (issued July 31, 1973).
Complainant obtained the rights of its
predecessor, BankAmerica, by way of a 1998 merger that created Complainant’s
present organization. For many years prior to the 1998 mergers, BankAmerica
provided a wide variety of banking and financial services in various parts of
the world. While conducting international operations BankAmerica made extensive
use of the service marks and trade names BANK OF AMERICA and BANKAMERICA to
promote, advertise and provide its services.
The services of Complainant and its
predecessor have been advertised and promoted extensively under the BANK OF
AMERICA mark worldwide in various forms of media. Complainant also conducts
operations from the <bankamerica.com> and <bankofamerica.com>
domain names. By reason of the adoption and continuous use of Complainant’s
BANK OF AMERICA and BANKAMERICA marks, those designations have a distinctive
quality specific to Complainant and its financial services.
Respondent registered the <wwwbankamerica.com>
domain name December 22, 2001. Complainant’s investigation of Respondent’s
use of the subject domain name has revealed that Respondent is using the <wwwbankamerica.com>
domain name to direct Internet users to a website located at
<magazines.com>. The aforementioned website contains links to pages where
subscriptions to various financial institutions and related magazines are
offered.
Complainant also indicates that
Respondent has developed a pattern of registering domain names incorporating
misspellings and typographical errors of Complainant’s service marks. More
specifically, Respondent previously used the <banckofamerica.com> domain
name to link to the <magazines.com> website that the current disputed
domain name resolves to. Complainant’s Submission indicates that the
<banckofamerica.com> domain name was transferred to Complainant by way of
a UDRP proceeding. See Bank of Am. Corp. v. Azra Khan, FA 114324
(Nat. Arb. Forum July 5, 2002).
DISCUSSION
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 the 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 the 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 rights in the
BANK OF AMERICA and BANKAMERICA marks by registering its marks with the USPTO
and subsequent continuous use of the marks in relation to its financial
services.
Respondent’s <wwwbankamerica.com>
domain name is identical to Complainant’s BANKAMERICA mark but for the
inconsequential addition of the “www” prefix to the second-level domain.
Previous Panels have determined that the addition of typographical errors, such
as incorporating the world-wide-web moniker into a domain name absent the
period separating it from the rest of the second-level domain, fail to
distinguish a mark from an infringing domain name, especially when the subject
mark is famous. See Bank of Am.
Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that
Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
Complainant’s registered trademark BANK OF AMERICA because it “takes advantage
of a typing error (eliminating the period between the www and the domain name)
that users commonly make when searching on the Internet”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has not submitted a Response
in this proceeding, leaving Complainant’s averments and evidence unopposed.
Therefore, the Panel is permitted to make all reasonable inferences in favor of
Complainant. 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Furthermore, because Complainant’s
Submission constitutes a prima facie case the burden shifts to
Respondent. Respondent’s lack of participation in this proceeding evidences its
lack of rights and legitimate interests in the <wwwbankamerica.com> domain
name. See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name).
Complainant has provided the Panel
with uncontested circumstances that indicate Respondent is opportunistically
using the infringing domain name to resolve to a commercial website. Respondent
presumably benefits from diverting unsuspecting Internet traffic to the
<magazines.com> domain name. Respondent’s diversionary use of the domain
name is not in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i), nor is it a noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). Furthermore, Respondent’s use of a famous
trademark to direct Internet traffic to a website conducting operations under a
dissimilar name evidences Respondent’s lack of genuine rights and interests in
the domain name. See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat.
Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the
domain name to confuse and divert Internet traffic is not a legitimate use of
the domain name); see also Big Dog
Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
As stated in the Findings, Respondent has previously
registered variations of Complainant’s famous marks; thus, supporting a finding
that Respondent lacks rights or interests in the domain name. There is no
apparent connection between the second-level domain “wwwbankamerica” and
Respondent, except for Respondent’s pattern of infringing activity. Because of
the fame associated with Complainant’s BANKAMERICA mark, it is presumed that
Respondent is not commonly known by a domain name that incorporates the mark in
the second-level domain pursuant to Policy ¶ 4(c)(ii). See Nokia Corp. v. Private, D2000-1271 (WIPO
Nov. 3, 2000) (finding that Respondent is not commonly known by the mark
contained in the domain name where Complainant has not permitted Respondent to
use the NOKIA mark and no other facts or elements can justify prior rights or a
legitimate connection to the names “Nokia” and/or “wwwNokia”); see also 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).
Accordingly, the Panel finds that Respondent lacks rights
and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
Previous interpretations of the bad faith
circumstances listed under Policy paragraph 4(b) indicate that the criteria are
non-exhaustive. Additionally, the Panel may consider the “totality of
circumstances” when determining if Respondent registered the domain name in bad
faith. See Cellular One Group v.
Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified
in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see
also 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”).
Because of Respondent’s record of
registering infringing domain names that incorporate Complainant’s marks, it is
apparent that Respondent had knowledge of Complainant’s rights in the marks
prior to registering the domain name. Not only has Respondent been involved in
previous Forum decisions with Complainant, but Respondent is using an internationally
recognized mark that imparts constructive knowledge on all those that seek to
infringe on the mark or any confusingly similar variation thereof. Respondent’s
intentional registration of a domain name, despite knowledge of Complainant’s
rights, indicates bad faith registration under Policy ¶ 4(a)(iii). See 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 Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith).
Respondent’s bad faith use of the <wwwbankamerica.com>
mark is illustrated by the fact that Respondent’s domain name resolves to a
commercial website. As stated, Respondent is engaged in the act of
typosquatting, whereby a registrant registers a confusingly similar variation
of a famous mark in order to benefit from Internet users who are unknowingly
diverted to the infringing domain name and corresponding website. Respondent,
by definition, is attempting to opportunistically benefit from the fame of
Complainant’s BANK OF AMERICA and BANKAMERICA marks and presumably receives
some form of compensation; thus, Respondent is using the <wwwbankamerica.com>
domain name in bad faith under Policy ¶ 4(b)(iv). See 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 State
Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11,
2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the website without permission
from Complainant).
Additionally, Respondent’s practice of
“typosquatting” has been recognized as a bad faith use of a domain name under
the UDRP. See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct.
26, 2000) (awarding <wwwalavista.com>, among other misspellings of
altavista.com, to Complainant); see also
Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(awarding domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that the requested relief shall be
hereby GRANTED.
Accordingly, it is Ordered that the <wwwbankamerica.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 28, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page