Bank of America Corporation v. Watch My
Domain c/o Nick M.
Claim Number: FA0603000661302
PARTIES
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 Watch My Domain c/o Nick M. (“Respondent”), 522 Shantivan, MHADA, Mumbai 400053 India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwbankofamercia.com>, <wwwbankofameric.com>, <wwwbankofamerical.com>, and <wwwbankofamericia.com>, registered with Lead Networks Domains Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 16, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 20, 2006.
On March 22, 2006, Lead Networks Domains Pvt. Ltd. confirmed by e-mail
to the National Arbitration Forum that the <wwwbankofamercia.com>, <wwwbankofameric.com>, <wwwbankofamerical.com>, and <wwwbankofamericia.com> domain names are registered with Lead
Networks Domains Pvt. Ltd. and that the Respondent is the current registrant of
the names. Lead Networks Domains Pvt.
Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt.
Ltd. 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 March 24, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 13, 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@wwwbankofamercia.com,
postmaster@wwwbankofameric.com, postmaster@wwwbankofamerical.com and
postmaster@wwwbankofamericia.com by e-mail.
A timely Response was received and determined to be complete on April
13, 2006.
On April 19, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant is the second largest banking company in the world. Complainant operates over 5,800 banking
centers in 29 states in the United States and in the District of Columbia. These operations serve more than one in four
households in the United States. Complainant has also international offices in
35 countries, which support clients across 150 countries, including India.
Complainant
owns the trademark BANK OF AMERICA for banking and financial services and owns
numerous trademark registrations and applications for this mark in the United
States and throughout the world, including the following:
·
BANK OF
AMERICA, U.S. Reg. No. 853,860, for commercial, savings, loan, trust
departments, and credit financing banding services, first use April 1928;
·
BANK OF
AMERICA, U.S. Reg. No. 2,713,720, for various banking and related financial
services, among other goods and services, among other goods and services, first
use 1928, 1998 and 1999;
·
BANK OF
AMERICA, India Reg. No. 791728, for printed matter, printed forms and
publications, stationery, credit cards and checks;
·
BANK OF
AMERICA, Application No. 822063, for computer software programs for use in
connection with banking, financial, investment and insurance services and
related materials; and
·
BANK OF
AMERICA, Application No. 1236790, for banking, financial, investment and
insurance services, among other related goods and services.
Complainant
and its predecessors in interest have used the BANK OF AMERICA trademark
continuously since at least as early as 1928.
In addition, Complainant owns domain names containing BANK OF AMERICA,
including <bankofamerica.com>, and uses these domain names to promote
Complainant’s services. Complainant’s
<bankofamerica.com> web site has 14.3 million active users.
Complainant contends that the Domain Names registered by Respondent are
confusingly similar to Complainant’s BANK OF AMERICA Marks. The Domain Names contain a very slight
misspelling of Complainant’s trademark.
The slight misspelling of Complainant’s well-known trademark is
insufficient to avoid a likelihood of confusion with Complainant’s mark. Furthermore, the addition of the letters
“www,” commonly recognized as the abbreviation for “World Wide Web,” in all
four of the Domain Names in front of the misspellings of the BANK OF AMERICA
trademark does not sufficiently differentiate the Domain Names from
Complainant’s trademarks.
Finally, the fact that the Domain Names contain the “.com” top level
domain name does not keep them from being confusingly similar to Complainant’s
marks. It has been held by a number of
panels applying the Policy that the addition of a top level domain, such as
“.us,” “.com,” “.net,” or “.org,” to a trademark does not sufficiently
differentiate the resulting domain name from the trademark, and that such a
domain name is confusingly similar to the incorporated trademark.
Complainant further contends that Respondent has no legitimate rights
or interest in the Domain Names at dispute.
Respondent has no connection or affiliation with Complainant, and
Complainant has not consented to Respondent’s use of the Domain Names. Further, Respondent’s business is not known
by the name BANK OF AMERICAL or BANK OF AMERICIA, etc. Decisions applying to the Policy have found
that the fact the Respondent is not known by a mark indicates the Respondent
has no rights in the mark. Moreover,
Respondent’s use of the Domain Names to earn revenue by advertising competing
financial services is not a bona fide offering of goods or services or a
legitimate use under the Policy.
Finally
Complainant contends that the Respondent has registered the Domain Names in bad
faith. According to Complainant Respondent
registered the Domain Names with the intent to divert users seeking information
about Complainant’s services to Respondent’s web sites and possibly to use the
Domain Names for purposes of distributing spam email.
Complainant contends that Respondent is using the Domain Names to
provide links to other providers of financial services under categories such as
“Credit Card” and “Business Credit Card,” which take users to links for
competing institutions. Respondent then
earns referral fees for each “click.”
Respondent’s use of Domain Names which contain the identical BANK OF
AMERICA marks, combined with the financial terms and services displayed on
Respondent’s websites, is clearly an attempt to divert internet users from
Complainant’s website.
Respondent’s attempt to take advantage of common typographical errors
is known as typosquatting, which is prima facie evidence of Respondent’s
bad faith intent to profit from the goodwill Complainant has developed in its
trademarks.
Respondent
has registered domain names consisting of the letters “www” followed by the
typos of Complainant’s marks.
Respondent has registered the Domain Names with the expectation that
users seeking Complainant’s web site will mistakenly omit a period after
“www.” Respondent’s attempt to take
advantage of the typographical mistakes of a user seeking Complainant’s web
site is evidence of Respondent’s bad faith intent to profit from the goodwill
Complainant has developed in its trademarks.
Respondent’s constructive knowledge of Complainant’s BANK OF AMERICA
marks prior to registration of the Domain Names further supports an inference
of bad faith on the part of the Respondent.
Complainant’s U.S. registrations serve as constructive notice of its
rights in the BANK OF AMERICA Marks.
Furthermore, since Complainant is one of the world’s largest financial
institutions with over 177,000 employees worldwide and a business presence in
India (where Respondent is located), it is highly unlikely that Respondent was
unfamiliar with Complainant’s BANK OF AMERICA mark at the time the Domain Names
were registered.
Finally, Complainant is aware of at least two other instances in which
Respondent has registered other well-known trademarks without
authorization. As these previous
decision illustrate, the Respondent has engaged in a pattern of registering
domain names that approximate well-known trademarks and then exploiting the
confusion caused by these domain names for Respondent’s own commercial gain.
Respondent has submitted the following Response:
“The domains mentioned in no way incorporate the complainant’s
mark as claimed. The domains are different from the complainant’s domains and
as submitted by them, they resolve to generic search directories and not to any
specific site or search category.
The domains are not
confusingly similar as claimed. The complainant has not submitted adequate
proof that any of their client or potential client was misled due the alleged
“confusingly similar” claim made by them.
FA0507000526028 (NAF Sep 23,
2005) and D2005-0724 (WIPO Sep 20, 2005) are sub judice in High Court of
Jurisdiction of Bombay. Unless they are disposed off by the Hon Court, no
reference can be made to them or any conclusion arrived at.
Naresh Malik aka Nick M“
FINDINGS
The Panel finds that:
1.
the Domain
Names <wwwbankofamercia.com>, <wwwbankofameric.com>, <wwwbankofamerical.com>, and <wwwbankofamericia.com> are confusingly similar to the
Complainant’s registered trademarks.
2.
the Respondent
has not established any right or legitimate interest in the Domain name and
3.
the Respondent
has registered and is using the domain names in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 rights in the BANK OF AMERICA mark by
registering it with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 853,860 issued July 30, 1968).
See
Am. Online, Inc. v. Thomas P. Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).
Complainant contends that the <wwwbankofamercia.com>, <wwwbankofameric.com>, <wwwbankofamerical.com>, and <wwwbankofamericia.com>
domain names are confusingly similar to Complainant’s BANK OF AMERICA mark because the
domain names incorporate the dominant features of Complainant’s mark, add the
letters “www,” transpose letters, omit letters, and add letters to the
mark. The Panel is of the view that
such minor alterations to Complainant’s registered mark are insufficient to
negate the confusingly similar aspects of Respondent’s domain names pursuant to
Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000)
(finding that the respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to the 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 Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum
Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the
complainant’s GOOGLE mark and noting that “[t]he transposition of two letters
does not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflects a very probable typographical error”); see
also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat.
Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to the complainant’s STATE FARM mark); see also
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).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Cont’l Hotel Corp. v. Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
The Panel is of the view that Respondent is not commonly known by the <wwwbankofamercia.com>, <wwwbankofameric.com>, <wwwbankofamerical.com>, and <wwwbankofamericia.com> domain names, the Panel therfore concludes that Respondent does not have rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore the
Panel is of the view that Respondent’s use of domain names that are confusingly
similar to Complainant’s BANK OF AMERICA mark to redirect Internet users
interested in Complainant’s services to Respondent’s websites is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
the respondent’s use of the disputed domain name to redirect Internet users to
a financial services website, which competed with the complainant, was not a bona
fide offering of goods or services).
The Panel is of the view that Respondent is using the disputed domain names for Respondent’s commercial gain by diverting Internet users interested in Complainant’s BANK OF AMERICA services to Respondent’s website featuring financial services that compete with Complainant. Furthermore, the Panel finds that Respondent’s use of domain names that are confusingly similar to Complainant’s mark to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site).
Furthermore, the Panel finds
that Respondent registered the confusingly similar domain names in order to promote services that compete with
Complainant. Finally the Panel is of
the view that Respondent registered the domain names primarily for the purpose
of disrupting the business of a competitor, which evidences bad faith
registration and use under Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competed with the complainant’s business); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business
from the complainant to a competitor’s website in violation of Policy ¶
4(b)(iii)); see also Gorstew Ltd.
v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring
<sandalsagency.com> and <sandalsagent.com> from the respondent
travel agency to the complainants, who operated Sandals hotels and resorts).
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwbankofamercia.com>, <wwwbankofameric.com>, <wwwbankofamerical.com>, and <wwwbankofamericia.com> domain names be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda,
Panelist
Dated: May 3, 2006
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