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Generic Top Level Domain Name (gTLD) Decisions |
Bank of America Corporation v.
Stop2Shop.com a/k/a Gene Vozzola
Claim Number: FA0210000128076
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston
& Bird, LLP. Respondent is Stop2Shop.com a/k/a Gene Vozzola,
Hollywood, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bankof-america.com>,
registered with Register.com, Inc.
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on October 14, 2002; the Forum received
a hard copy of the Complaint on October
17, 2002.
On
October 15, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the
domain name <bankof-america.com>
is registered with Register.com, Inc. and that Respondent is the current
registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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
October 22, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 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@bankof-america.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
December 3, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John
J. Upchurch 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<bankof-america.com> domain
name is identical to Complainant’s BANK OF AMERICA mark.
Respondent
has no rights or legitimate interests in the <bankof-america.com> domain name.
Respondent
registered and used the <bankof-america.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns a registered trademark
with the United States Patent and Trademark Office (“USPTO”) for the BANK OF
AMERICA mark
(Reg. No. 853,860).
Complainant received trademark registration status in 1968. Complainant has used the BANK OF AMERICA
mark over the years to denote its financial related services.
Complainant’s BANK OF AMERICA services
have grown due to Complainant’s investment in advertising and promoting its
services under
the BANK OF AMERICA mark worldwide. In an effort to further its business interests, Complainant
operates a website at <bankofamerica.com>. At this website Complainant promotes a wide variety of financial
services. Complainant spends a
substantial amount of money annually to advance its BANK OF AMERICA financial
services.
Respondent registered the <bankof-america.com> domain name
on August 2, 2002. The <bankof-america.com> domain name
is actively used to link Internet users to a website called “Stop2Shop
Superstore.” At this website Respondent
offers a wide variety of goods for sale to the general public. Complainant sent two separate letters to
Respondent demanding that Respondent cease its use of the <bankof-america.com> domain name and transfer the
registration rights. Respondent failed
to reply and still uses the domain name to divert to its general sales 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 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 its rights in
the domain name by proof of registration with the USPTO.
Respondent’s <bankof-america.com> domain name contains Complainant’s
entire BANK OF AMERICA mark. The
second-level domain is identical to the BANK OF AMERICA mark but for the hyphen
in between “of” and “america.” Adding a
hyphen to a trademark in a domain name does not create a distinct domain name
because a hyphen has no distinguishing characteristics. Therefore, the second-level domain is
identical to the mark, and the generic top-level domain “.com” has no legal
significance. Thus, Respondent’s <bankof-america.com> domain name
is identical to Complainant’s BANK OF AMERICA mark. See Chernow
Communications 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"); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not come forward to
challenge Complainant’s prima facie Complaint. Moreover, the burden of demonstrating rights or legitimate
interests in the <bankof-america.com>
domain name shifted to Respondent when Complainant asserted that Respondent
lacked such rights or interests.
Therefore, Respondent has not met its burden and the Panel may presume
that Respondent has no rights or legitimate interests in the
<bankof-america.com> domain
name. See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests in
respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate
interests in the
domain name); see also 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, because the Complaint
remains uncontested, the Panel accepts all allegations as true and will draw
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”);
see also
Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
to be deemed true).
Respondent is actively using the <bankof-america.com> domain name
to divert Internet traffic to its “Stop2Shop Superstore” related website,
whereby consumers may purchase a plethora of
assorted goods. It is fair to say that Internet traffic is
being diverted by the <bankof-america.com>
domain name because there is no logical connection between the second-level
domain, which is identical to Complainant’s longstanding
BANK OF AMERICA mark,
and the goods offered for sale at the resulting website. Respondent is not in the banking business;
rather, Respondent appears to operate in the consumer sales industry. Thus, it is apparent that Respondent
opportunistically uses the <bankof-america.com>
domain name because of the value associated with the BANK OF AMERICA mark. Hence, Respondent fails to use the <bankof-america.com> domain name
in connection with a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i), and Respondent’s use does
not represent a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See
Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet
traffic is not
a legitimate use of the domain name); see also 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).
Respondent has not come forward to
support a finding that the <bankof-america.com>
domain name is Respondent’s common identity.
The only evidence of Respondent’s identity, the WHOIS information page,
reflects Respondent’s name as either <stop2shop.com>
or Gene
Vozzola. Therefore, Respondent is not
commonly known by the <bankof-america.com>
domain name and has no rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark).
Accordingly, the Panel finds that
Respondent lacks rights or legitimate interests in the <bankof-america.com> domain name; therefore, Policy ¶
4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent commercially benefits from its
infringing use of Complainant’s BANK OF AMERICA mark, which, as previously
stated, Respondent
has no logical connection with. The Internet traffic that Respondent diverts to its website by
way of the <bankof-america.com>
domain name is more than likely searching for Complainant by using the BANK OF
AMERICA mark when entering a domain name address. Therefore, the resulting “Stop2Shop Superstore” website creates
source confusion for Internet users.
Respondent is trading off of the value associated with the BANK OF
AMERICA mark to increase its website hits and potentially draw
more business
based on the strength of the mark.
Hence, Respondent’s actions constitute bad faith registration and use
under Policy ¶ 4(b)(iv). See Kmart
v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (presuming Respondent
profits from its diversionary use of Complainant’s mark when Respondent’s
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, therefore, concluding bad faith pursuant
to Policy ¶ 4(b)(iv)); see
also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website).
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
shall be hereby
GRANTED.
Accordingly, it is Ordered that the
domain name <bankof-america.com>
be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 13, 2002
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