DECISION

Bank of America Corporation v. BankofAmeric

Claim Number: FA0111000102617

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Luke Anderson, of McGuireWoods LLP.  Respondent is BankofAmeric, Egg Harbor, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bankofameric.com>, registered with BulkRegister.com, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 28, 2001; the Forum received a hard copy of the Complaint on November 28, 2001.

On December 4, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <bankofameric.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.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 December 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2001 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@bankofameric.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 January 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 urges the following:

Respondent’s <bankofameric.com> domain name is confusingly similar to Complainant’s registered BANK OF AMERICA mark.  Respondent has no rights or legitimate interests in the domain name at issue. Respondent registered and used the domain name in bad faith.

B. Respondent did not file a response in this proceeding.

FINDINGS

Complainant registered the BANK OF AMERICA service mark on the Principal Register for the United States Office of Patent and Trademarks on July 30, 1968 (Registration No. 853,860), and has subsequently renewed its registration in 1988.  Complainant has used the service mark in connection with commercial, savings, loan, trust, and credit financing banking services.

For the last seventy-three years Complainant has established significant goodwill through advertisement of its banking services throughout the United States via the Internet, television, print, radio, and its corporate sponsorship of events.

Respondent registered the <bankofameric.com> domain name on April 5, 2000, well after Complainant registered and began use of its mark.  The domain name at issue  resolves to Respondent’s website where a company called Superfit.com hosts classified ads.  Additionally, Respondent’s website is linked to another webpage called <supershop.com>.  This page contains solicitations for Internet users to purchase items ranging from antiques to watches.

 

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.

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;

(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 to and/or Confusingly Similar

Complainant has established it has rights in the BANK OF AMERICA mark because it registered the mark at the USPTO.  Respondent’s domain name is confusingly similar to Complainant’s BANK OF AMERICA mark because the deletion of one letter in the domain is not sufficient to defeat a claim of confusing similarity.  See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).  Furthermore, the deletion of one letter is a common typing error made by Internet users typing Complainant’s mark. It has been determined that common typing errors of Complainant’s mark do not defeat a claim of confusing similarity.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark “Bank of America” because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

Moreover, Respondent’s domain name, which is identical to Complainant’s registered trademark but for a letter, is confusingly similar to Complainant’s mark because it creates a likelihood of confusion for the Internet user as to Complainant’s association with Respondent’s website.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).

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

Rights to or Legitimate Interests

Complainant has established that it has legal rights to the mark contained in the domain name registered by Respondent.  The Respondent did not come forward with proof of any rights to or legitimate interests in the mark.  The Panel is permitted to make all inferences in favor of Complainant when Respondent fails to respond to a Complaint.  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”).

Further, Respondent’s failure to provide a Response indicates that Respondent has no rights to or legitimate interest in the 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).

Respondent’s use of a domain name that is identical to Complainant’s famous mark, except for the deletion of one letter, permits an inference that Respondent has attempted to trade on the good will of Complainant’s famous service mark.  This cannot constitute a bona fide offering of goods, and therefore, indicates Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i).  See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (finding that the use of a domain name that intentionally trades on the fame of another can not constitute a bona fide offering of goods).

In addition, the Panel is permitted to presume that Respondent is not commonly known by a domain name that is confusingly similar to Complainant’s famous mark.   As a result, Respondent has not demonstrated rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).   See Victoria’s Secret et al 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Respondent’s use of the confusingly similar domain name to attract Complainant’s customers to its website links featuring classified ads and product advertisements reveals Respondent’s intention to divert confused Internet users to its website for commercial gain.  This is not a legitimate noncommercial or fair use.  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); 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).

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

Registration and Use in Bad Faith

Complainant urges that Respondent acted in bad faith in registering and using the domain name in issue.  Respondent has demonstrated bad faith use and registration by registering and using a domain name that is likely to be falsely associated with Complainant’s business by Internet users.  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”). 

Moreover, because Complainant’s mark is so well known and because it is inevitable that people would associate Complainant with Respondent’s site, Respondent’s registration and use of the confusingly similar domain name suggests opportunistic bad faith.  See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name “singaporeairlines.com” is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).

Finally, Respondent’s intended use of the confusingly similar domain name to divert Internet users to its website full of classified ads and advertisements for its own commercial gain is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

           

            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 <bankofameric.com>  be hereby transferred from Respondent to Complainant.

                                    Hon. Carolyn Marks Johnson, Panelist

                     Dated: January 14, 2002.

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