DECISION

Bank of America Corporation v. Netchem, Inc.

Claim Number: FA0111000102615

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Luke Anderson, of McGuireWoods LLP.  Respondent is Netchem, Inc., Milltown, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bankfamerica.com> and <bankofameria.com>, registered with BulkRegister.com.

PANEL

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.

 Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 28, 2001; the Forum received a hard copy of the Complaint on November 28, 2001.

On November 28, 2001 and December 6, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain names <bankfamerica.com> and <bankofameria.com>, respectively, are registered with BulkRegister.com and that Respondent is the current registrant of the names.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 27, 2001 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@bankfamerica.com and postmaster@bankofameria.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 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain names <bankfamerica.com> and <bankofameria.com> are confusingly similar to the BANK OF AMERICA mark, in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant registered the BANK OF AMERICA service mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 853,860 on July 30, 1968 and has continuously used the mark in commerce since 1928 in connection with banking services. 

Respondent registered the <bankfamerica.com> domain name on May 5, 2000, and the <bankofameria.com> domain name on May 23, 2000.  Respondent has used the domain names to redirect users to a commercial classified advertising website.

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has sufficiently established its rights in the BANK OF AMERICA mark through registration with the U.S. Patent and Trademark Office.

The disputed domain names are confusingly similar to Complainant’s marks.  Both of the disputed domain names differ from the mark by only one letter, and both are also phonetically similar to the mark.  See YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the Complainant’s mark, VeriSign, are so close that confusion can arise in the mind of the consumer).

The omission of the letter “o” in the <bankfamerica.com> domain name and the omission of the letter “c” in <bankofameria.com> do not defeat the confusing similarity between the mark and the domain names.  See 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 mark “State Farm”); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> is confusingly similar to Complainant’s trademark, VICTORIA’S SECRET).

The inclusion of “.com” in the disputed domain names is inconsequential when determining confusing similarity.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights to and legitimate interests in the BANK OF AMERICA mark.  Because Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  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).

By intentionally using misspellings of Complainant’s well-known mark, Respondent has attempted to divert Internet traffic away from Complainant’s website toward another commercial site for profit.  Such a use does not constitute a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in Respondent’s use of the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> to link to an advertising website).

There is also no evidence that Respondent is commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii) or that Respondent has made a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Registration and Use in Bad Faith

Complainant’s BANK OF AMERICA mark is both famous and distinctive.  By registering and using confusingly similar domain names without regard for the mark, Respondent acted with “opportunistic bad faith.”  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names at issue were so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggested “opportunistic bad faith”).

Further, by registering and using likely misspellings of Complainant’s mark to ensnare Internet users who intended to visit Complainant’s website, a practice known as “typosquatting,” Respondent has also demonstrated bad faith.  See e.g., Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <bankfamerica.com> and <bankofameria.com> domain names be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: January 7, 2002

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