Bank of America Corporation v. Chris
Glenn
Claim
Number: FA0407000296608
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 Chris Glenn (“Respondent”), 8416 Quail
Hollow Drive, Harrisburg, NC, 28075.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bankofamericasports.com> and <bankofamericaolympics.com>,
registered with Go Daddy Software, 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 July 15, 2004; the Forum received a hard copy of the Complaint July
19, 2004.
On
July 16, 2004, Go Daddy Software, Inc., confirmed by e-mail to the Forum that
the domain names <bankofamericasports.com> and <bankofamericaolympics.com>
are registered with Go Daddy Software, Inc., and that Respondent is the current
registrant of the names. Go Daddy Software, Inc., verified that Respondent is
bound by the Go Daddy Software, Inc. registration agreement and thereby has
agreed to resolve domain name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 21, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 10, 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, administrative and
billing contacts, and to postmaster@bankofamericasports.com
and postmaster@bankofamericaolympics.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
August 13, 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondent, <bankofamericasports.com> and <bankofamericaolympics.com>,
are confusingly similar to Complainant’s BANK OF AMERICA mark.
2. Respondent has no rights to or legitimate
interests in the <bankofamericasports.com> and <bankofamericaolympics.com>
domain names.
3. Respondent registered and used the <bankofamericasports.com>
and <bankofamericaolympics.com> domain names 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
and one of the world’s best-known financial institutions. Complainant is sponsoring and has sponsored
numerous sports teams and events, including the Olympics. Complainant spends tens of millions of
dollars annually promoting its products through sponsorships and other media
advertising.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the BANK OF AMERICA mark (Reg. No. 853,860 issued July 30,
1968). Complainant and its predecessors
have used this mark in commerce since at least April 1928.
Complainant’s
main website is operated at <bankofamerica.com>. Complainant’s website is used to promote
Complainant’s wide variety of financial services.
Respondent
registered the <bankofamericasports.com> and <bankofamericaolympics.com>
domain names February 11 and 17, 2004, respectively. These domain names that Respondent
registered redirect Internet users to Respondent’s registrar’s home page and
offer the domain names for sale.
The website
attached to the disputed domain names contains the following statement at the
top of the page: “For Sale…Interested in buying this domain? Inquire at: cglenn21@msn.com.”
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 Complainant to 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 to 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, using extrinsic proof in this proceeding, that it holds the
registration for the BANK OF AMERICA mark with the United States Patent and
Trademark Office. 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.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to protect
themselves”).
The <bankofamericasports.com>
and <bankofamericaolympics.com> domain names are confusingly
similar to Complainant’s BANK OF AMERICA mark because the only difference is
the mere addition of a generic term, “sports” or “olympics.” The addition of a generic term to a third
party’s markdoes not sufficiently differentiate a domain name from a trademark
under the Policy. See AXA China Region Ltd. v. KANNET Ltd.,
D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or
generic nouns can rarely be relied upon to differentiate the mark if the other
elements of the domain name comprise a mark or marks in which another party has
rights); see also Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of Complainant combined with a generic word or term); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the subject domain name incorporates the VIAGRA mark in its entirety,
and deviates only by the addition of the word “bomb,” the domain name is
rendered confusingly similar to Complainant’s mark).
Complainant
established that the disputed domain names are confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
Complainant
established with extrinsic proof in this proceeding that it has rights to and
legitimate interests in the mark and domain names. Respondent did not respond to the Complaint, which results in an
implied admission that Respondent lacks rights and legitimate interests in the
domain name. Further, in such
circumstances, the Panel may make reasonable findings that allegations in the
Complaint are true. See 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); see also Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true); see also 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).
The only
evidence in the record that relates to the Panel’s determination of whether
Respondent is commonly known by the disputed domain names is the WHOIS
registration information for the respective domain names. However, the WHOIS information for the
domain names lists the domain name registrant as Chris Glenn, not as “Bank of
America sports” or “Bank of America Olympics.”
The Panel finds that Policy ¶ 4(c)(ii) does not apply to
Respondent. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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); see also 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").
Furthermore, the
<bankofamericasports.com> and <bankofamericaolympics.com>
domain names are confusingly similar to Complainant’s BANK OF AMERICA mark
and are used to redirect Internet users to Respondent’s registrar’s home page,
which offers the domain name registrations for sale. Such offers consistently have been found to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J.
Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum
Sept. 7, 2000) (finding rights or legitimate interests do not exist when one
has made no use of the websites that are located at the domain names at issue,
other than to sell the domain names for profit); see also Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, Respondent’s apparent willingness to
dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding
Respondent has no rights or legitimate interests where Respondent registered the
domain name with intent to sell its rights).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering and using two domain
names that contain in their entirety Complainant’s protected BANK OF AMERICA
mark. Further, Respondent manifested intent to sell the disputed domain name
registrations because the websites themselves declare: “For Sale.” Given the long- standing use of the BANK OF
AMERICA mark and the fame associated with the mark in the public’s mind, it is
more likely than not that Respondent’s future sale of the domain name
registrations was aimed at the deep pockets of Complainant’s business or one of
Complainant’s competitors. Without the
benefit of a response offering an explanation to the contrary, the Panel finds
that the circumstances sufficiently indicate that Respondent acquired the
domain names primarily to sell the registration of the domain names to
Complainant or one of Complainant’s competitors for a value in excess of
out-of-pocket expenses directly related to the domain names, pursuant to Policy
¶ 4(b)(i). See Pocatello Idaho
Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb.
21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is
some accompanying evidence that the domain name was registered because of its
value that is in some way dependent on the trademark of another, and then an
offer to sell it to the trademark owner or a competitor of the trademark
owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”); see also Diners
Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839
(Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes
that it is “available for lease or sale,” evidence that the domain name was
registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred
from the fact that “the sole value of the [<wwwdinersclub.com] domain name
is dictated by its relation to Complainant’s registered DINERS CLUB mark”).
Additionally,
Respondent’s registration of disputed domain names that incorporate
Complainant’s well-known registered mark in its entirety along with generic
terms suggests that Respondent knew of Complainant’s rights in the BANK OF
AMERICA mark before registering the names.
Thus, the Panel finds that Respondent likely chose the <bankofamericasports.com>
and <bankofamericaolympics.com> domain names based on the
distinctive and well-known qualities of Complainant’s mark, which evidences bad
faith registration and use pursuant to 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); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see also
Sony Kabushiki Kaisha v. Inja,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”).
Complainant has
established 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 <bankofamericasports.com> and <bankofamericaolympics.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 27, 2004
Click Here to return to
the main Domain Decisions Page.
Click Here to return to our Home
Page