Bank of America Corporation v. Milen Radumilo
Claim Number: FA1911001870120
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benefitsonline-ml.com> (‘the Domain Name’), registered with Tucows Domains 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2019; the Forum received payment on November 6, 2019.
On November 7, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <benefitsonline-ml.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@benefitsonline-ml.com. Also on November 8, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the trademark ML first used in 2000 and BENEFITS ONLINE first used in 1997, both registered, inter alia, in the USA for financial services. The Complainant owns and operates a web site at ml.com and owns and uses benefitsonline.com. It also has an app called Benefits Online.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s marks incorporating them both in their entirety, adding only a hyphen and the gTLD “.com” which does not prevent such confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name has been used to redirect Internet users to a website delivering adware which is not a bona fide offering of goods or services or a legitimate noncommercial fair use. The Domain Name has also been offered for sale which shows it is registered for profit and not for a legitimate or bona fide use. The combination of the two marks of the Complainant in the Domain Name shows that the infringement of the Complainant’s rights is intentional and that the Respondent is aware of the Complainant and its business.
Use of the Domain Name to divert and confuse Internet users looking for the Complainant to deliver adware for commercial gain is bad faith.
The Domain Name has been offered for sale for $9888 less than one month after registration.
Respondent is a serial cybersquatter that has been the subject of many adverse decisions under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trademark ML first used in 2000 and BENEFITS ONLINE first used in 1997, both registered, inter alia, in the USA for financial services. The Complainant owns and operates a web site at ml.com and owns and uses benefitsonline.com. It also has an app called Benefits Online.
The Domain Name registered in 2019 has been used to deliver adware and has been offered for sale for a sum well in excess of costs of registration. The Respondent has been the subject of many adverse decisions under the Policy.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines two of the Complainant’s trademarks (ML and BENEFITS ONLINE both registered, inter alia, in the USA for financially related goods and services with first use recorded as 2000 and 1997 respectively), a hyphen and the gTLD “.com.”
The addition of a gTLD and a hyphen is irrelevant in determining whether a domain is confusingly similar to two registered marks of the Complainant when those marks are included entirely in the domain name. See Bid Industrial Holdings (Proprietary) Limited and BFS Group Limited v. Shareef Ghumra / United Foods Group, FA 1784135 (Forum June 8, 2018) (finding the domain name was confusingly similar to the complainant’s marks where “[t]he only difference between the Domain Name and the Complainant’s trademarks is the mere addition of ‘.com’ and placement of a hyphen between the elements of the BIDVEST and 3663 marks.”).
Accordingly, the Panel finds that the Domain Name is confusingly similar to two marks in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
There is evidence of use of the Domain Name to point to malware which cannot be a bona fide offering of goods or services or a noncommercial legitimate fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”)
The Domain Name has been offered for sale for a sum well in excess of the costs of registration which can also indicate a lack of rights or legitimate interests. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”)
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name has been offered for sale for 9888 USD a sum well in excess of the costs of registration and indicative of bad faith under Policy 4(b)(i).
The Respondent is the subject of a large number of adverse decisions under the UDRP showing a pattern of conduct of cybersquatting activity under Policy 4 (b)(ii). See Zynga Inc. v. Ryan G Foo / PPA Media Services, FA 1650448 (Forum Jan. 14, 2016) (finding bad faith per Policy ¶ 4(b)(ii) because the complainant demonstrated the respondent had a history of adverse UDRP findings, holding: “Respondent is a serial cybersquatter.”).
The Domain Name has been pointed to a site offering malware in an attempt to disrupt the business of the Complainant which is bad faith registration and use. Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).)
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith under Policy 4(b)(i), (ii) and (iii) and has satisfied the third limb of the Policy and there is no need to consider any further allegations of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benefitsonline-ml.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 2, 2019
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