DECISION

Bank of America Corporation v. Ling Shun Shing

Claim Number: FA0211000132447

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is Ling Shun Shing, Shanghai, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com>, registered with IHoldings.com, Inc. d/b/a Dotregistrar.com.

PANEL

On December 27, 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 November 8, 2002; the Forum received a hard copy of the Complaint on November 12, 2002.

On November 22, 2002, IHoldings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> are registered with IHoldings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names.  IHoldings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the IHoldings.com, Inc. d/b/a Dotregistrar.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 November 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 16, 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@onlinebankofamerica.com, postmaster@bankofamericana.com, postmaster@bankifamerica.com, postmaster@bankofamereica.com and postmaster@bankofamericca.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:

Respondent’s <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> domain names are confusingly similar to Complainant’s registered BANK OF AMERICA mark.

Respondent does not have any rights or legitimate interests in the <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> domain names.

Respondent registered and used the <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> domain names in bad faith.

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

FINDINGS

Complainant, Bank of America Corporation, is the largest consumer bank in the United States, and currently holds numerous trademark registrations for the BANK OF AMERICA mark worldwide (e.g. U.S. Reg. No. 853,860, registered on July 30, 1968 and Chinese Reg. No. 935,995, registered on January 21, 1997).

Complainant reflects its mark online through its registration of the <bankofamerica.com> and <bankofamericaonline.com> domain names, both operating as important components of Complainant’s marketing program. Through the Internet and other media, Complainant spends tens of millions of dollars annually promoting the goodwill associated with the BANK OF AMERICA mark.

Respondent, Ling Shun Shing, registered the <onlinebankofamerica.com> on September 24, 2002 and the <bankofamericana.com> domain name on September 17, 2002. The <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> domain names were registered on October 4, 2002. Prior to all of these registrations, Respondent was not authorized or licensed to use Complainant’s BANK OF AMERICA mark for any purpose. Respondent uses each of the disputed domain names to redirect Internet users to a search engine titled “Try the Top Searches on the Web!” This search engine website includes several links directing Internet users to providers of financial and other banking services.

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 registration of the mark with the proper governmental authorities worldwide, as well as through widespread and continuous use of the mark.

In general, each of the disputed domain names are confusingly similar to Complainant’s registered BANK OF AMERICA mark in that they incorporate Complainant’s mark with minor alterations (such as an additional word or a misspelling of some portion of the mark). The top-level domain “.com” is an irrelevant distinction for purposes of Policy ¶ 4(a)(i) analysis. 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).

Specifically, Respondent’s <onlinebankofamerica.com> domain name is identical to Complainant’s mark except by the addition of the word “online” before Complainant’s mark. The addition of this generic word does nothing to diminish confusion between Complainant’s mark and the domain name, especially in light of Complainant’s registration of the <bankofamericaonline.com>, which also incorporates the word “online” with the BANK OF AMERICA mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also 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 the Complainant combined with a generic word or term).

 Respondent’s <bankofamericana.com>, <bankofamericca.com> and <bankofamereica.com> domain names each entail a minor misspelling of the word AMERICA in Complainant’s BANK OF AMERICA mark. These slight differences (the addition of the letters “na” and addition of another “c” or the letter “e” to the word AMERICA) create a difference that is phonetically and visually similar to Complainant’s mark and are confusingly similar to that mark. See 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); see also Am. Online, Inc. v. Peppler d/b/a RealTimeInternet.com, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar).

Respondent’s <bankifamerica.com> domain name does to the word OF in Complainant’s BANK OF AMERICA mark what the previous three domain names did to the word AMERICA; by substituting the letter “i” for the letter “o” in the word OF, Respondent has not created a distinction capable of preventing confusion in the minds of Internet users. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 the <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark and Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

By failing to submit a Response to the Complaint, Respondent has implied to the Panel that it has no rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); 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).

Without a response to rely upon, the Panel will find for Complainant if Complainant shows that none of the criteria illustrating rights and legitimate interests in the domain names under Policy ¶ 4(c)(i)-(iii) are applicable to Respondent.  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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent is using the infringing domain names to redirect Internet users to an Internet search engine which includes links to websites that compete with Complainant and its services. Respondent presumably receives a commission for each Internet user thus redirected. Misdirecting consumers through use of Complainant’s mark does not qualify as a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor does gaining a referral fee for such redirection satisfy the legitimate noncommercial or fair use provisions of Policy ¶ 4(c)(iii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also 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 AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Respondent’s WHOIS information lists itself as “Ling Shun Shing.” In light of Respondent’s lack of response, the Panel infers that Respondent is not “commonly known by” <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> or  <stopandshopsucks.com>, and Policy ¶ 4(c)(ii) is inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The dominant feature of each of the disputed domain names involves some variation of Complainant’s BANK OF AMERICA mark. Respondent is capitalizing on this confusion to redirect Internet users to a search engine website, presumably for commercial gain. In doing so, Respondent’s behavior qualifies as bad faith use and registration of the domain names pursuant to Policy ¶ 4(b)(iv). See 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)); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Furthermore, Respondent’s minor variations of Complainant’s BANK OF AMERICA mark epitomizes typosquatting, the misspelling of a famous mark in a domain name in order to capitalize on the fame of that mark. Typosquatting also qualifies as bad faith use and registration of a domain name under Policy ¶ 4(a)(iii). See. 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); see also 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).

Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <onlinebankofamerica.com>, <bankofamericana.com>, <bankifamerica.com>, <bankofamereica.com> and <bankofamericca.com> domain names be TRANSFERRED from Respondent to Complainant.

James P. Buchele, Panelist

Dated: December 30, 2002

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