DECISION

Bank of America Corporation v. Vox Consult

Claim Number: FA0111000102492

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is Vox Consult, MONACO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bankofamericaresort.com>, registered with CORE.

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 21, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.

On November 30, 2001, CORE confirmed by e-mail to the Forum that the domain name <bankofamericaresort.com> is registered with CORE and that Respondent is the current registrant of the name.  CORE has verified that Respondent is bound by the CORE 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 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 20, 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@bankofamericaresort.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 2, 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 makes the following allegations:

Respondent’s <bankofamericaresort.com> domain name is confusingly similar to Complainant’s registered BANK OF AMERICA service mark.  Respondent has no rights to 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 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 <bankofamericaresort.com> domain name on February 19, 2001, well after Complainant regsitered and began use of its BANK OF AMERICA trademark.  Respondent’s  domain name directs Internet users to a website where services are advertised and promoted.  Respondent has a history of registering domain names comprised of famous marks combined with the generic term “resort”.

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 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 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

Respondent’s <bankofamericaresort.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA registered trademark because the addition of a generic term like “resort” does not sufficiently distinguish the domain name from the mark for purposes of confusing similarity.  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 the Complainant combined with a generic word or term); see also 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).

Moreover, Respondent’s domain name, which includes Complainant’s mark in its entirety, is confusingly similar to Complainant’s mark because it creates a likelihood of confusion for the Internet user as to the 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 its legal rights to and legitimate interest in the mark used in its entirety in the disputed domain name.  Respondent has not come forward with any proof of rights to or legitimate interest in the mark.  The Panel is permitted to make all inferences in favor of Complainant when Respondent fails to respond to the 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 permits the inference that Respondent has no rights or legitimate interests 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 addition of a generic term is evidence of Respondent’s attempt 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, under these facts, it can be presumed that Respondent is not commonly known by a domain name that is confusingly similar to a famous mark of another. 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).

Moreover, Respondent’s use of the confusingly similar domain name to attract Complainant’s customers to its website, linked to its own unconnected website of advertisements, 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 a domain name that contained Complainant’s famous mark.  The facts permit the Panel to find that 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”).

Furthermore, Respondent’s use of the confusingly similar domain name to attract Internet users for commercial gain to its website full of advertisements 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).

Finally, Respondent’s pattern of registering domains confusingly similar to famous trademarks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).

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

Hon. Carolyn Marks Johnson, Panelist

       Dated: January 16, 2002.

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