Bank of America Corporation v.
Commercestream Corp.
Claim
Number: FA0312000218873
Complainant is Bank of America Corporation (“Complainant”),
represented by Larry C. Jones of Alston & Bird, LLP,
Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC
28280-4000. Respondent is Commercestream Corp. (“Respondent”), 1223 Wilshire Blvd., #1220,
Santa Monica, CA 90403.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwbancamerica.com>, registered with Psi-Japan,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically December 10, 2003; the Forum received a hard copy of the
Complaint December 12, 2003.
On
December 10, 2003, the Forum sent a Request for Registrar Verification to Psi-Japan,
Inc., via e-mail, to confirm that the <wwwbancamerica.com> domain
name is registered with Psi-Japan, Inc., and that Respondent is the current
registrant of the name. No response to the Request for Registrar Verification
was received from Psi-Japan, Inc by the Forum. The Forum then conducted its own
WHOIS search of the <wwwbancamerica.com> domain name through
Psi-Japan, Inc.’s standard WHOIS search utility, which confirmed the identity
and contact details of the Respondent as the registrant of the <wwwbancamerica.com>
domain name and also confirmed that the Registrar for the disputed domain
name is in fact Psi-Japan, Inc.
On
December 29, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 19, 2004, 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 and administrative
contacts, and to postmaster@wwwbancamerica.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
January 26, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent,
<wwwbancamerica.com>, is confusingly similar to Complainant’s
BANCAMERICA mark.
2. Respondent has no rights to or legitimate
interests in the <wwwbancamerica.com> domain name.
3. Respondent registered and used the <wwwbancamerica.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bank of America Corporation, is the largest consumer bank in the United States.
Complainant uses many trademarks to denote its banking and financial services,
including the BANCAMERICA mark (e.g. U.S. Reg. No. 2,134,374, registered
on February 3, 1998). Complainant spends tens of millions of dollars annually
promoting and advertising its services under the BANCAMERICA mark, and uses the
mark as an important part of its marketing program on the Internet at the
<bancamerica.com> domain name, which redirects Internet users to
Complainant’s main website at the <bankofamerica.com> domain name.
Respondent,
Commercestream Corp., registered the <wwwbancamerica.com> domain name
on July 12, 2003, without license or authorization to use Complainant’s
BANCAMERICA mark for any purpose. By August 27, 2003, the disputed domain name
hosted a website for a company called “Clear Credit,” which provided credit
reports. Complainant sent several cease and desist letters and Respondent
removed the “Clear Credit” content from the disputed website but did not
respond to Complainant’s letters in any way.
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
will draw such inferences as the Panel 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 by extrinsic proof in this proceeding that it has rights in the
BANCAMERICA mark through registration of the mark on the Principal Register of
the U.S. Patent and Trademark Office, as well as by widespread use and
promotion of the mark in commerce. 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.”).
The domain name registered by Respondent, <wwwbancamerica.com>, is
confusingly similar to Complainant’s BANCAMERICA mark. But for the addition of
the “www” abbreviation in front of Complainant’s BANCAMERICA mark, the disputed
domain name is identical to Complainant’s mark, and it is well established that
the “www” prefix does not sufficiently distinguish a domain name from a
complainant’s mark for the purposes of Policy ¶ 4(a)(i). 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 the <wwwbancamerica.com> domain name is confusingly similar to Complainant’s BANCAMERICA mark
under Policy ¶ 4(a)(i).
Complainant
established in this proceeding that it has rights to and legitimate interests
in the mark contained in its entirety within the disputed domain name.
Respondent’s decision to capitalize on the goodwill surrounding Complainant’s
BANCAMERICA mark by registering a domain name that appropriates that mark and
adds the “www” prefix to it is evidence in and of itself that Respondent lacks
rights to and legitimate interests in the disputed domain name. Respondent’s
use of the disputed domain name to drum up service for the “Clear Credit”
company under these circumstances cannot be considered to fall within the ambit
of Policy ¶¶ 4(c)(i) or (iii). See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting, as a means of redirecting consumers against their will
to another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”).
No evidence before the Panel suggests that Respondent is “commonly known
by” the disputed domain name and the Panel finds that Respondent typosquatted
on Complainant’s mark in registering the disputed domain name. These two factors lead the Panel to conclude
that Respondent cannot avail itself of the provisions of Policy ¶ 4(c)(ii). See
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 Complainant has rights to and legitimate interests in the
disputed domain name and that Respondent does not under Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent registered and used the disputed domain name in bad
faith. In simply adding the “www”
prefix to Complainant’s registered BANCAMERICA mark, Respondent’s behavior
indicates that it had actual knowledge of Complainant’s rights in the
BANCAMERICA mark at the time that the disputed domain name was registered.
Typosquatting of this nature is evidence that the domain name was registered in
bad faith. Respondent’s subsequent use of the domain name to promote the
services of the “Clear Credit” company, accomplished through the unauthorized
use of Complainant’s mark, is sufficient grounds to find that the domain name
was used in bad faith. See Canadian Tire Corp., Ltd. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003)
(holding that the absence of a dot between the “www”and “canadiantire.com” in
the <wwwcanadiantire.com> domain name was likely to confuse Internet
users and evidences bad faith registration and use of the domain name); see
also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
the <wwwdewalt.com> domain name was registered to “ensnare those
individuals who forget to type the period after the “www” portion of [a]
web-address,” evidence that the domain name was registered and used in bad
faith); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”).
The Panel thus
finds that Respondent registered and used the <wwwbancamerica.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is 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 <wwwbancamerica.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 9, 2004.
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