START-UP TRADEMARK OPPOSITION POLICY

DECISION

Bank of America Corporation v. Marius Wunner

Claim Number: FA0204000110845

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”), of Alston & Bird LLP.  Respondent is Marius Wunner, Regensburg, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bankofamerica.biz>, registered with CORE.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.

On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

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 June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <bankofamerica.biz> domain name is identical to Complainant's BANK OF AMERICA mark.

Respondent has no rights or legitimate interests in the <bankofamerica.biz> domain name.

Respondent registered the <bankofamerica.biz> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant is the largest consumer bank in the United States.  Complainant has used the trade name BANK OF AMERICA to identify its banking and financial services for several years.  Complainant holds a registered service mark in the United States for the BANK OF AMERICA mark (Reg. No. 853,860).

Respondent registered the disputed domain name on March 27, 2002.  Respondent is commonly known as Marius Wunner.  Complainant investigation has found no evidence that Respondent is doing business under the name BANK OF AMERICA or <bankofamerica.biz>. 

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established that it has rights in the BANK OF AMERICA mark through continuous use and registration with the United States Patent and Trademark Office.  The <bankofamerica.biz> domain name is identical to Complainant’s BANK OF AMERICA mark.

The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has not demonstrated rights or legitimate interests in the disputed domain name.  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).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

There is no evidence that Respondent holds a trademark or service mark BANK OF AMERICA.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i).  See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name); see also 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 under the UDRP 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).

Based on the fame of Complainant’s mark, any use of the <bankofamerica.biz> domain name will cause a likelihood of confusion as to the source, sponsorship, and affiliation of the domain.  It can be inferred that Respondent will attempt to attract Complainant’s customers to Respondent’s website for commercial gain.  This type of use is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002)  (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”).

Respondent is known to the Panel as Marius Wunner, and has not come forward to establish otherwise.  Without any evidence to show that Respondent is commonly known as BANK OF AMERICA or <bankofamerica.biz>, the Panel cannot find that Respondent has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii).  See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Because Complainant’s mark is famous it can be inferred that Respondent had knowledge of Complainant’s rights in the BANK OF AMERICA mark when it registered the <bankofamerica.biz> domain name.  Respondent’s registration of the disputed domain name, despite this knowledge is evidence of bad faith registration.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).  Furthermore, due to the nature of the STOP process, Respondent received notice that Complainant filed an IP Claim before it registered the disputed domain name.  Therefore Respondent had actual knowledge that Complainant held a service mark for the BANK OF AMERICA mark when it registered <bankofamerica.biz> ; thus, it registered the disputed domain name in bad faith.  See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).

The <bankofamerica.biz> domain name is identical to Complainant's BANK OF AMERICA mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <bankofamerica.biz> domain name despite it being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that 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”); 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’”).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <bankofamerica.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Sandra Franklin, Panelist

Dated: July 8, 2002

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