Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Bank of America Corporation v. Oui!
Claim Number: FA0205000113978
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston
& Bird, LLP. Respondent is Oui!, Lisbon, PORTUGAL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bankofameriac.com>
and <bankofamerida.com>, registered with Tucows, Inc.
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 May 14, 2002; the Forum received
a hard copy of the Complaint
on May 20, 2002.
On
May 15, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <bankofameriac.com> and <bankofamerida.com> are registered with Tucows, Inc. and
that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is
bound by the Tucows, 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
May 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 10,
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@bankofameriac.com, postmaster@bankofamerida.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
June 20, 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<bankofameriac.com> and <bankofamerida.com> domain
names are confusingly similar to Complainant's BANK OF AMERICA mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names
in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant acquired the BANK OF AMERICA
mark in a series of mergers in 1998.
Complainant owns several service marks for BANK OF AMERICA registered
with the United States Patent and Trademark Office, including
Reg. No. 853,860
issued July 30, 1968. Complainant also
owns three registrations for BANK OF AMERICA in Portugal, Respondent’s
domicile. Complainant is currently the largest
consumer bank in the United
States and one of the world’s best-known financial institutions.
Respondent registered the disputed domain
names on February 13, 2002. Respondent
is using the disputed domain names in order to divert Internet users to
<superinternetdeals.com/creditcard.html>. This website features advertisements for credit cards that are
not affiliated or associated with Complainant.
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 that it has
rights in the BANK OF AMERICA mark through registration in the United States
and Portugal. Furthermore, Respondent’s
domain names are confusingly similar to Complainant’s mark because they are
both misspellings of BANK OF
AMERICA.
Common misspellings of famous marks within domain names are not
considered to create a distinct mark capable of overcoming a claim
of confusing
similarity. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to the Complainant’s
STATE FARM
mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain
name does not significantly change the overall impression of the mark).
The Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests
in the disputed domain names. 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).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. 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”).
Respondent is using two domain names that
are misspellings of Complainant’s famous mark in order to divert Internet users
looking
for Complainant to a website advertising credit cards that compete with
Complainant’s services. This behavior
is not considered to be 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 Encyclopaedia Brittanica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark);
see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users
to its competing website).
There is no evidence, and Respondent has
not come forward to establish that it is commonly known by the disputed domain
names. Therefore, Respondent has no
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). 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
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by
the disputed domain name
or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fame of Complainant’s mark
and its registrations in Portugal it can be inferred that Respondent was on
notice of Complainant’s
mark when it registered the disputed domain names. Therefore, Respondent’s registration of the
disputed domain names despite this notice is evidence of bad faith
registration. See 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"); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given
the world-wide prominence of the
mark and thus Respondent registered the domain name in bad faith).
Furthermore, Respondent’s use of
misspellings of Complainant’s mark to divert Internet users to a website
advertising a credit card
for Respondent’s own commercial gain is evidence of
bad faith use pursuant to Policy ¶ 4(b)(iv).
See 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); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also
Bama Rags, Inc. v. Zuccarini, FA
94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent
attracted users to advertisements).
Respondent registered two infringing
domain names at the same time. This
establishes a pattern of bad faith registration known as typosquatting. See 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).
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 names <bankofameriac.com> and <bankofamerida.com> be
transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 28, 2002
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/977.html