DECISION

Bank of America Corporation v. FN Publishing Inc.

Claim Number: FA0211000129136

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird LLP.  Respondent is FN Publishing Inc., Port Richey, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bankofamericascam.com>, registered with Tucows.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 6, 2002; the Forum received a hard copy of the Complaint on November 8, 2002.

On November 7, 2002, Tucows confirmed by e-mail to the Forum that the domain name <bankofamericascam.com> is registered with Tucows and that Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 November 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 2, 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@bankofamericascam.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 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.)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  <bankofamericascam.com> domain name is confusingly similar to Complainant's BANK OF AMERICA mark.

Respondent has no rights or legitimate interests in the disputed domain name.

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant is the largest consumer bank in the United States and one of the world’s best-known financial institutions.  Complainant has exclusively used the BANK OF AMERICA mark to identify its banking and financial services.  Complainant holds numerous registrations for the BANK OF AMERICA mark with the United States Patent and Trademark Office including service mark Registration Number 853,860.  Complainant also makes use of <bankofamerica.com> in order to market its financial services.

Respondent, FN Publishing, registered the disputed domain name on December 10, 2001.  Respondent is using the disputed domain name to redirect Internet users to <fnpublishing.com>.  This website advertises publishing and technology services. Respondent does not have permission or a license from Complainant to use the BANK OF AMERICA mark. 

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 that it has rights in the BANK OF AMERICA mark through continuous use and registration with the United States Patent and Trademark Office (“USPTO”).

Respondent’s <bankofamericascam.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the word “scam” to the end and the generic top-level domain “.com.”  The addition of a generic term such as “scam” does not create a distinct mark capable of overcoming a claim of confusing similarity because Complainant’s BANK OF AMERICA mark is still the dominant feature of the domain name.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

Furthermore, the addition of the generic top-level domain “.com” does not add any distinctive features because it is a required element of all domain names.  Therefore, the addition of “.com” is irrelevant when determining whether a mark is identical or confusingly similar.  See 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); see also 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).

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

Rights or Legitimate Interests

Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See 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); see also 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).

Respondent is using the disputed domain name in order to redirect Internet users to <fnpublishing.com>, a website unconnected to Complainant’s business.  Because Respondent is known to this Panel as FN Publishing, a name identical to the website the domain name is directed to, it can be inferred that Respondent is using <bankofamericascam.com> in order to attract Internet users to its website for commercial gain.  This type of use is not considered to be 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 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

There is no evidence on record that Respondent is commonly known by any other name than FN Publishing.  Furthermore, Respondent is using the disputed domain name in order to direct Internet traffic to <fnpublishing.com>.  There is no mention or use of the BANK OF AMERICA mark or BANK OF AMERICA SCAM.  Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because there is no evidence that it is commonly known as BANK OF AMERICA SCAM or <bankofamericascam.com>.  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); see also 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).

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

Registration and Use in Bad Faith

Based on the fame of Complainant’s BANK OF AMERICA mark it can be inferred that Respondent had actual knowledge of Complainant’s rights in the mark before it registered the disputed domain name.  Registration of an infringing domain name, despite knowledge of Complainant’s rights, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent is using the dispute domain name in order to direct Internet traffic to its own website.  It can be inferred that Respondent is profiting from this redirection of traffic.  The use of a confusingly similar domain name to cause Internet user confusion for Respondent’s commercial gain 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 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); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)).

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 <bankofamericascam.com> be transferred from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  December 26, 2002

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