Bank of America Corporation v. Whois Privacy Protection Service Inc. c/o Whois Agent
Claim Number: FA0512000604717
Complainant is Bank of America Corporation (“Complainant”), represented by Randel S. Springer of Womble Carlyle Sandridge & Rice PLLC, One West Fourth Street, Winston-Salem, NC 27101. Respondent is Whois Privacy Protection Service Inc. c/o Whois Agent (“Respondent”), PMB 368, 14150 NE 20th St-F1, c/o bankofamericaeagls.com, c/o bankofamericanc.com, c/o bankofamericasonlinebanking.com, c/o eagls-bankofamerica.com, c/o eaglesbankofamerica.com, c/o visabankofamerica.com, c/o bankofaaamerica.com, Bellevue, WA 98007.
The domain names at issue are <bankofamericaeagls.com>, <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <eagls-bankofamerica.com>, <eaglesbankofamerica.com>, <visabankofamerica.com> and <bankofaaamerica.com>, registered with Enom, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2005.
On December 9, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bankofamericaeagls.com>, <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <eagls-bankofamerica.com>, <eaglesbankofamerica.com>, <visabankofamerica.com> and <bankofaaamerica.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 19, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 2006 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@bankofamericaeagls.com, postmaster@bankofamericanc.com, postmaster@bankofamericasonlinebanking.com, postmaster@eagls-bankofamerica.com, postmaster@eaglesbankofamerica.com, postmaster@visabankofamerica.com and postmaster@bankofaaamerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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. Respondent’s <bankofamericaeagls.com>, <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <eagls-bankofamerica.com>, <eaglesbankofamerica.com>, <visabankofamerica.com> and <bankofaaamerica.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA or EAGLS mark.
2. Respondent does not have any rights or legitimate interests in the <bankofamericaeagls.com>, <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <eagls-bankofamerica.com>, <eaglesbankofamerica.com>, <visabankofamerica.com> and <bankofaaamerica.com> domain names.
3. Respondent registered and used the <bankofamericaeagls.com>, <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <eagls-bankofamerica.com>, <eaglesbankofamerica.com>, <visabankofamerica.com> and <bankofaaamerica.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bank of America Corporation, is the second
largest banking company in the world, with more than 5,800 banking centers in
twenty-nine states and the District of Columbia, as well as offices in
thirty-one countries supporting clients in 150 countries.
Complainant and its predecessors in interest have used the
BANK OF AMERICA mark continuously since at least as early as 1928. Complainant has used its EAGLS mark since
1997 in association with its interactive online financial program. Complainant registered its BANK OF AMERICA
mark with the United States Patent and Trademark Office (“USPTO”) on July 30,
1968 (Reg. No. 853,860) and its EAGLS mark on August 15, 2000 (Reg. No.
2,376,711).
Respondent registered the <bankofamericaeagls.com>, <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <eagls-bankofamerica.com>, <eaglesbankofamerica.com>, <visabankofamerica.com> and <bankofaaamerica.com> domain names on August 11, 2005. The domain names resolve to generic search-engine websites that display links to third-party products and services, including some of Complainant’s competitors.
Respondent’s <visabankofamerica.com> domain name incorporates a third party’s mark and interests. Specifically, the VISA mark is implicated by way of Respondent’s domain name. Due to practical difficulties inherent in the UDRP, cooperative complaint initiation is unlikely and infeasible. Because Complainant initiated this dispute prior to any other interested party, Complainant has the opportunity to acquire the domain names, while seeking to protect its BANK OF AMERICA and EAGLS marks from an infringing use. However, due to the procedural complexities presented by the current dispute, the following issue must be addressed: that Complainant seeks acquisition of the subject domain name in good faith, and will forfeit its interest in the contested domain name if the other represented mark is infringed upon following a transfer of the domain name registration to Complainant. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (finding that the complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name was contingent upon good faith possession, and the complainant would forfeit its interest in the domain name if it infringed on the other represented marks); see also G.D. Searle v. Dunham, FA 123901 (Nat. Arb. Forum Oct. 9, 2002); see also V&S Vin & Sprit Aktiebolag (publ) v. Pride Not Profit, Inc., FA 452057 (Nat. Arb. Forum May 16, 2005).
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 asserted that it has rights in the BANK OF
AMERICA and EAGLS marks due to its registrations with the USPTO. The Panel finds Complainant’s registrations
with a national authority sufficient to support its assertion of rights for the
purposes of Policy ¶ 4(a)(i). See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <bankofamericaeagls.com>, <eagls-bankofamerica.com>
and
<eaglesbankofamerica.com>
domain names are comprised of Complainant’s BANK OF AMERICA and EAGLS marks
with the addition of a hyphen to one of the domain names. The combination of two of Complainant’s
marks and the addition of a hyphen do not create domain names that are distinct
from Complainant’s marks. Thus, the
Panel finds that the domain names are confusingly similar to Complainant’s
marks under Policy ¶ 4(a)(i). See
Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where respondent combined the complainant’s
POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see
also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (holding “that the use or absence of punctuation marks, such as hyphens,
does not alter the fact that a name is identical to a mark").
The <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <visabankofamerica.com> and <bankofaaamerica.com> domain names incorporate Complainant’s BANK OF AMERICA mark in its entirety and add letters, common terms, and another’s mark. These additions are minimal and do not alter the fact that Complainant’s registered mark is clearly included in the domain names. Furthermore, Respondent’s use of the generic top-level domain “.com” in the domain names is necessary for registration and is not a factor in determining similarity under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also PNC Fin. Servs. Group Inc. v. Unasi Inc., FA 535925 (Nat. Arb. Forum Sept. 20, 2005) (finding the <pncbankmastercard.com>, <pncbankvisa.com> and <pncbankvisacard.com> domain names confusingly similar to the complainant’s PNCBANK.COM mark).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent has no connection or affiliation with Complainant, and Complainant has not consented to Respondent’s registration of the disputed domain names. Furthermore, the Panel has not been provided with any evidence to suggest that Respondent is commonly known by any of the disputed domain names. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the 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"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent is using the disputed domain names, which all include Complainant’s BANK OF AMERICA mark, to operate generic search engine websites that display links to third-party products and services, including some that compete with Complainant’s financial products and services. It has been widely held under the Policy that a respondent’s use of domain names that incorporate another’s mark to derive financial gain through referral fees is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent has not established rights or legitimate interests in the domain names under Policy ¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s BANK OF AMERICA mark in the domain names, as well as the use of Complainant’s EAGLS mark in several of the domain names, is likely to create a likelihood of confusion among Internet users as to Complainant’s affiliation with the resulting search engine website. By attracting Internet users to its website through this likelihood of confusion, Respondent is attempting to benefit from the goodwill associated with Complainant’s marks. This is evidence of bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <bankofamericaeagls.com>, <bankofamericanc.com>, <bankofamericasonlinebanking.com>, <eagls-bankofamerica.com>, <eaglesbankofamerica.com>, <visabankofamerica.com> and <bankofaaamerica.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 27, 2006
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