DECISION

Bank of America Corporation v. ThadZeus Enterprises

Claim Number: FA0204000109371

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is ThadZeus Enterprises, Columbus, OH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 9, 2002; the Forum received a hard copy of the Complaint on April 15, 2002.

On April 16, 2002, CORE confirmed by e-mail to the Forum that the domain name <bankofaerica.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 April 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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@bankofaerica.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 May 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,  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

1. Respondent’s domain name <bankofaerica.com> is confusingly similar to Complainant’s BANK OF AMERICA mark.

2. By diverting Internet users for commercial purposes, and to a third-party website <chon.org>, Respondent has no rights or legitimate interests in <bankofaerica.com>.

3. Respondent has intentionally attracted Internet users for personal gain by using a common misspelling of Complainant’s trademark. This represents a blatant attempt to divert Internet traffic intended for Complainant to Respondent’s website. Complainant also contends that Respondent has engaged in registering and using misspellings of Complainant’s trademark to divert users to third party websites. Thus, Respondent has registered and used the disputed domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant registered the BANK OF AMERICA mark with the United States Patent and Trademark Office on July 30, 1968, Registration No. 853,869. Complainant has used the mark in connection with commercial, savings, loan, trust and credit financing banking services. Complainant has used the BANK OF AMERICA mark for the last seventy-three years and has established the mark in the public’s mind through advertising in the print, television, and radio media and on the Internet.

Respondent registered the disputed domain name on September 4, 2000 and has used it to offer Internet users an opportunity to enter into a lottery. The domain name is also linked to a website <chon.org> where an organic club is promoted.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 BANK OF AMERICA mark through federal registration and subsequent continuous use. (U.S. Service Mark Reg. No. 853,860). The disputed domain name <bankofaerica.com> is confusingly similar to Complainant’s mark.

The only difference between the disputed domain name and the mark is a deleted “m,” and thus, the domain name is confusingly similar to the mark. 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). In fact, Respondent’s domain name is identical to Complainant’s mark except that it includes a slight typographical error of deletion. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant); see also Bank of Am. Corp. v. BankofAmeric, FA 102617 (Nat. Arb. Forum Jan. 14, 2002) (finding <bankofameric.com> confusingly similar to Complainant’s BANK OF AMERICA mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights to and interests in its mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed 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).

By infringing upon Complainant’s registered mark in order to enlist Internet users for a lottery, Respondent is not making 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 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

Additionally, no evidence here suggests that Respondent is a bank, investment firm, or other financial institution, and Respondent has no preexisting rights in BANK OF AMERICA or BANK OF AERICA as a trademark, service mark or trade name. No evidence suggests that Respondent is commonly known as “bankofaerica” or <bankofaerica.com> pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as ThadZeus Enterprises. 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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and thus, that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the disputed domain name <bankofaerica.com>, which is confusingly similar to Complainant’s mark, in order to solicit Internet users who were searching for the Complainant’s site <bankofamerica.com>. Given the prominence of Complainant’s mark on the Internet, Respondent was aware or should have been aware of Complainant’s rights in the mark. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

The evidence also indicates that Respondent did not register or begin using the subject domain name until September 4, 2000 – long after Complainant’s BANK OF AMERICA mark had acquired its fame. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”). Without any preexisting rights in BANK OF AMERICA or BANK OF AERICA as a trademark, service mark, or trade name, it may be assumed that Respondent adopted, registered and is using the subject domain name because of the fame and goodwill associated with Complainant’s BANK OF AMERICA mark. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the Complainant’s mark, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill").

Respondent’s intentional use of a domain name that infringes upon Complainant’s rights in order to attract internet users to its own website for commercial gain demonstrates bad faith pursuant to Policy ¶ 4 (b)(iv). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offered a number of web services).

When the Respondent registered a domain name nearly identical to the Complainant’s mark, differing only in a slight typographical error, it exhibited a practice of “typosquatting” that has been recognized as a bad faith use of a domain name under the Policy.  See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <alavista.com>, among other misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <dowjones.com>, <sj.com>, <barrons.com> and <barronsmag.com> to Complainants).

Accordingly, 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 be hereby GRANTED.

Accordingly, it is Ordered that the domain name <bankofaerica.com> be TRANSFERRED from Respondent to Complainant.

                 

James A. Carmody, Esq., Panelist

Dated: May 22, 2002

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