DECISION

Bank of America Corporation v. Peter Carrington a/k/a Party Night, Inc.

Claim Number: FA0208000118311

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bankofaamerica.com>, <bankodamerica.com>, and  <bankpfamerica.com> registered with Key-Systems GMBH.

PANEL

On October 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 16, 2002; the Forum received a hard copy of the Complaint on August 19, 2002.

On August 16, 2002, Key-Systems GMBH confirmed by e-mail to the Forum that the domain names <bankofaamerica.com>, <bankodamerica.com>, and <bankpfamerica.com> are registered with Key-Systems GMBH and that Respondent is the current registrant of the names.  Key-Systems GMBH has verified that Respondent is bound by the Key-Systems GMBH 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 August 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2002 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@bankofaamerica.com, postmaster@bankodamerica.com and postmaster@bankpfamerica.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.

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 Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s domain names are confusingly similar to Complainant’s registered BANK OF AMERICA mark.

2. Respondent does not have any rights or legitimate interests in the subject domain names.

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

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant acquired the BANK OF AMERICA mark in a series of mergers in 1998.  Complainant owns several service marks for BANK OF AMERICA registered with the United States Patent and Trademark Office, including Reg. No. 853,860 issued July 30, 1968. Complainant also owns three registrations for its BANK OF AMERICA mark in the Benelux countries (The Netherlands, Belgium and Luxembourg), Respondent’s place of domicile (Reg. Nos. 70,898; 153,782; and, 648,961).

Complainant is currently the largest consumer bank in the United States and one of the world’s best-known financial institutions. Complainant’s banking services are advertised extensively under the BANK OF AMERICA mark worldwide in various forms of media. Complainant also operates from the <bankofamerica.com> domain name, which resolves to a website that is an integral aspect of Complainant’s marketing program, and is used to promote Complainant’s wide variety of financial services. In advertising and promoting its financial services to the public under its BANK OF AMERICA mark, Complainant has expended tens of millions of dollars annually.

By reason of the adoption and longstanding continuous use of Complainant’s BANK OF AMERICA mark, the mark has achieved a high degree of recognition and goodwill, and is a source identifier for Complainant’s financial services.

Respondent registered the <bankofaamerica.com>, <bankodamerica.com>, and <bankpfamerica.com> domain names on May 27, 2002, May 31, 2002 and June 4, 2002, respectively. Complainant’s investigation of Respondent’s domain names revealed that they all directly link Internet users to a pornographic website located at <hanky-panky-college.com>. Furthermore, Internet users accessing the subject domain names encounter a series of “pop up” advertisements and links. Two such advertisements represent products in competition with Complainant’s financial services, namely, “USA Gold” and “AmericaOne” credit cards.   

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the BANK OF AMERICA mark through registering the mark with various worldwide trademark authorities, and continuous use of the mark since 1968.

Respondent’s <bankofaamerica.com>, <bankodamerica.com>, and <bankpfamerica.com> domain names are confusingly similar to Complainant’s famous BANK OF AMERICA mark. Respondent’s domain names incorporate various common typographical errors into Complainant’s famous BANK OF AMERICA mark. Precedent has determined that second-level domains that deviate insignificantly from a famous mark are rendered confusingly similar under a Policy ¶ 4(a)(i) analysis. Respondent’s opportunistic motivations are clear, and its actions represent the infringing practice of typosquatting whereby a registrant incorporates inconsequential changes into famous marks. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); 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 Complainant’s marks).

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

Rights or Legitimate Interests

Because Respondent failed to submit a Response in this proceeding the Panel is permitted to resolve all reasonable 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”).

Furthermore, Respondent’s refusal to contest Complainant’s assertions implies that Respondent does not refute the veracity or accuracy of Complainant’s statements, or the logical conclusions drawn from those statements. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) that Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts).

Complainant has submitted unrefuted evidence that indicates Respondent is commercially capitalizing from the diversionary use of the subject domain names. More specifically, Respondent’s domain names resolve to <hanky-panky-college.com>, a domain name that, in turn, resolves to a website that contains explicit content. Presumably, Respondent benefits from the diversion of Internet users to this commercial website. Therefore, Respondent’s opportunistic use of the subject domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor it is a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). To find otherwise would not only allow Respondent to commercially benefit from its infringing activities, but would constitute an endorsement of the tarnishing effect Respondent’s website has on Complainant’s established mark. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark).

There is no evidence that would suggest Respondent has any legitimate connection to the subject domain names. Typosquatting, by definition, implies that Respondent is attempting to profit from the established goodwill of another’s mark. Respondent is not licensed or authorized to use the BANK OF AMERICA mark, or any variation thereof, in connection with any use. Because of the fame associated with Complainant’s mark, its longstanding use and numerous trademark registrations, it is presumed that Respondent is not commonly known by the domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

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

Registration and Use in Bad Faith

Uncontested circumstances and evidence indicate Respondent has been engaged in the practice of typosquatting. This practice alone has been recognized as bad faith use of a domain name under Policy ¶ 4(a)(iii). As previously stated, typosquatting, by its definition, encapsulates many of the bad faith criterion listed in Policy paragraph 4(b). See L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names); 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).

Furthermore, Respondent’s domain names resolve to a pornographic website that tarnishes the goodwill and reputation associated with Complainant’s BANK OF AMERICA mark. Respondent’s registration of the infringing domain names not only tarnishes Complainant’s mark, but Respondent commercially benefits from the diverted Internet interest it receives from its confusingly similar domain names. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark; thus, Respondent’s activities evidence bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

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

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <bankofaamerica.com>, <bankodamerica.com>, and <bankpfamerica.com> domain names be TRANSFERRED from Respondent to Complainant.

James P. Buchele, Panelist

Dated: October 7, 2002

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