Bank of America Corporation v. Tak Ume
domains for sale
Claim
Number: FA0304000154528
Complainant is
Bank of America Corporation, Charlotte, NC (“Complainant”) represented
by Larry C. Jones of Alston & Bird LLP. Respondent is Tak
Ume domains for sale, Los Angeles, CA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <www-bankofamerica.com> registered with Go
Daddy Software, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 14, 2003; the Forum received a hard copy of the
Complaint on April 14, 2003.
On
April 14, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <www-bankofamerica.com> is registered with Go
Daddy Software, Inc. and that Respondent is the current registrant of the name.
Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 17, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 7, 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@www-bankofamerica.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
May 15, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch 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 <www-bankofamerica.com>
domain name is confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent does not have any rights or
legitimate interests in the <www-bankofamerica.com> domain name.
3. Respondent registered and used the <www-bankofamerica.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with United States Patent and Trademark Office
(“USPTO”) for the BANK OF AMERICA mark (Reg. No. 853,860 registered on July 30,
1968) in relation to commercial, savings, loan, trust departments and credit
financing banking services. Complainant operates a website at
<bankofamerica.com> in conjunction with its financial services.
Respondent
registered the <www-bankofamerica.com> domain name on October 2,
2002. Respondent is using the disputed domain name to redirect Internet traffic
to <eos-1.com>, a website that describes itself as the world’s best
online marketplace.
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 that it has rights in the BANK OF AMERICA mark through registration
with the USPTO and continuous use in commerce.
Respondent’s <www-bankofamerica.com>
domain name is confusingly similar to the Complainant’s mark because the
disputed domain name incorporates the entire mark and merely adds “www-” to the
beginning and the generic top-level domain (gTLD) to the end of Complainant’s
mark. By adding “www-” to the beginning of the mark, Respondent has not
sufficiently distinguished its domain name from the mark because the addition
of “www-” simply capitalizes on a common misspelling by substituting a hyphen
for a period. 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”); see also Dana
Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb.
Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name
confusingly similar to Complainant's registered DANA mark because Complainant's
mark remains the dominant feature). Moreover, Panels have consistently found
that the addition of a gTLD to the end of a mark is irrelevant for the purposes
of Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Blue Sky Software Corp. v.
Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to Complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not submitted a Response to the Panel for this proceeding. Thus, the Panel
accepts all reasonable allegations and inferences in the Complaint as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also
Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000)
(drawing two inferences based on the Respondent’s failure to respond: (1) the
Respondent does not deny the facts asserted by the Complainant, and (2) the
Respondent does not deny conclusions which the Complainant asserts can be drawn
from the facts).
Furthermore, due
to Respondent’s failure to respond, the Panel may presume that it lacks all
rights or legitimate interests in the disputed 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); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Respondent is
using the <www-bankofamerica.com> domain name to divert Internet
traffic to <eos-1.com>, a website that describes itself as the world’s
best online marketplace. The use of a domain name confusingly similar to a
registered trademark with the intent to divert Internet users to an online retail
website is neither a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website); see
also Kosmea Pty Ltd. v. Krpan,
D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent
has an intention to divert consumers of Complainant’s products to Respondent’s
site by using Complainant’s mark).
Moreover,
Respondent has offered the Panel no proof and there is no evidence in the
record that indicates that Respondent is commonly known by either WWW-BANK OF
AMERICA or <www-bankofamerica.com>.
Therefore, Respondent has failed to establish any rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the
nonsensical nature of the [<wwwmedline.com>] domain name and its
similarity to Complainant’s registered and distinctive [MEDLINE] mark, the
Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
It can be
inferred that Respondent had knowledge of Complainant’s BANK OF AMERICA mark
when Respondent registered the <www-bankofamerica.com> domain name
because the disputed domain name is a misspelling of Complainant’s mark.
Registration of a domain name, despite knowledge of Complainant’s rights, is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 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).
Respondent’s
registration and use of the disputed domain name demonstrates a practice
commonly referred to as “typosquatting.” This practice diverts Internet users
who misspell Complainant’s mark to a website apparently owned by Respondent for
Respondent’s commercial gain. “Typosquatting” has been recognized as evidencing
bad faith registration and use under Policy ¶ 4(b)(iv). See Marie Claire
Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that
the letters "www" are not distinct in the "Internet world"
and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to Complainant's MARIE CLAIRE trademark); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and
<davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to
Complainant).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <www-bankofamerica.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
May 19, 2003
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