DECISION

Bank of America Corporation v. Out Island Properties, Inc.

Claim Number:  FA0304000154531

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones of Alston & Bird LLP. Respondent is Out Island Properties, Inc., South Miami, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bancamericaairports.com>, <airportbankamerica.com>, <airportbancamerica.com>, and <bankamericaportal.com>, registered with Tucows, 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 April 14, 2003; the Forum received a hard copy of the Complaint on April 17, 2003.

On April 15, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <bancamericaairports.com>, <airportbankamerica.com>, <airportbancamerica.com>, and <bankamericaportal.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. 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 April 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 13, 2003, 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@bancamericaairports.com, postmaster@airportbankamerica.com, postmaster@airportbancamerica.com, and postmaster@bankamericaportal.com by e-mail.

Having received no timely 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.  Then, on May 21, 2002, Respondent by email letter set out a short paragraph explaining its position and sought 10 days for further response.  The Panel is not aware that Respondent supplemented this email request before the due date for the Decision and the Panel has no basis for extending deadlines.

On May 20, 2003, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <bancamericaairports.com>, <airportbankamerica.com>, <airportbancamerica.com>, and <bankamericaportal.com>, are confusingly similar to Complainant’s BANK OF AMERICA mark.

2. Respondent has no rights or legitimate interests in the <bancamericaairports.com>, <airportbankamerica.com>, <airportbancamerica.com>, and <bankamericaportal.com> domain names.

3. Respondent registered and used the <bancamericaairports.com>, <airportbankamerica.com>, <airportbancamerica.com>, and <bankamericaportal.com> domain names in bad faith.

B.  Respondent failed to submit a timely Response in this proceeding and Respondent’s email letter does not qualify as a Response.

FINDINGS

Complainant, Bank of America Corporation, was formed from a series of mergers in 1998 when a successor of NationsBank Corporation merged with BankAmerica Corporation.  The resulting entity was named BankAmerica Corporation until April 28, 1999, when the name changed to Bank of America Corporation.  Complainant is the largest consumer bank in the United States and Complainant’s predecessor, BankAmerica Corporation, was one of the best-known financial institutions at the time of the 1998 merger.  Prior to 1998, BankAmerica Corp. provided a wide range of banking and financial services, and promoted and advertised its services through the service marks and trade names BANKAMERICA and BANCAMERICA. 

Complainant owns rights in the BANKAMERICA and BANCAMERICA marks through its service mark registrations with the United States Patent and Trademark Office (U.S. Reg. Nos. 965,288 and 2,134,374).  Complainant now owns interests in the BANKAMERICA and BANCAMERICA marks through the merger. 

Complainant owns the registrations for the <bankamerica.com> and <bancamerica.com> domain names.  Complainant uses both domain names to direct Internet traffic to its <bankofamerica.com> website, where Complainant promotes its wide variety of financial services. 

Complainant’s services and its predecessor’s services have been advertised worldwide through the BANKAMERICA and BANCAMERICA marks in various forms of media.  Complainant spends tens of millions of dollars annually in promoting financial services offered under its various trademarks and service marks, including the BANKAMERICA and BANCAMERICA marks.  As a result, Complainant’s financial services have become readily identifiable with the BANKAMERICA and BANCAMERICA marks. 

Respondent registered the <bancamericaairports.com>, <airportbankamerica.com>, <airportbancamerica.com>, and <bankamericaportal.com> domain names on June 6, 2000.  All the domain names are used to direct Internet traffic to a search engine website.  The resulting search engine website contains links to providers of a variety of goods and services, including financial and travel services.  In addition, Internet users are subjected to pop-up advertisements when they reach the search engine website. 

On December 17, 2002, and January 15, 2003, Complainant contacted Respondent requesting that its use of the <bancamericaairports.com>, <airportbankamerica.com> and <airportbancamerica.com> domain names cease and desist and that the domain name registrations be transferred to Complainant.  Complainant later learned that Respondent also registered the <bankamericaportal.com> domain name.  Respondent never replied to Complainant’s correspondence and continues to use the disputed domain names to link to a search engine website. 

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 and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) 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; 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 to and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the BANCAMERICA and BANKAMERICA marks through proof of trademark registration with the U.S. Patent and Trademark Office.

The domain names registered by Respondent, <bancamericaairports.com> and <airportbancamerica.com>, are confusingly similar to Complainant’s BANCAMERICA mark.  The addition of the word “airport[s]” to Complainant’s distinct BANCAMERICA mark does not detract from the source identifying quality of said mark in the domain name.  Alternatively stated, the addition of the generic word “airport[s]” to the BANCAMERICA mark does not create a new distinct mark capable of overcoming a finding of confusing similarity.  Because the BANCAMERICA mark remains the dominant feature of the <bancamericaairports.com> and <airportbancamerica.com> domain names, the Panel finds the domain names to be confusingly similar to said mark.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).

Likewise, the <airportbankamerica.com> and <bankamericaportal.com> domain names are confusingly similar to Complainant’s BANKAMERICA mark.  The use of the generic words “airport” and “portal” do not detract from the dominating presence of the BANKAMERICA mark.  Since the domain names predominantly feature Complainant’s valuable BANKAMERICA trademark, the Panel finds that a likelihood of consumer confusion exists. 

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

Rights to or Legitimate Interests

Respondent failed to submit a timely and adequate Response to the Complaint.  The Complaint contains factual allegations that Respondent has no rights or legitimate interests in the disputed domain names that contain in their entirety Complainant’s well-known marks.  In the absence of a Response, the Panel will presume that Complainant’s assertions are true, unless clearly contradicted by the evidence available to the Panel.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the disputed domain names.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also 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). 

In addition, without a challenge put forward by Respondent, the Panel will draw all reasonable inferences in Complainant’s favor. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the disputed domain names to direct Internet traffic to a search engine website.  Since the resulting website contains links to a variety of general subjects, the Panel infers that Respondent profits from the traffic that is diverted to the search engine website.  The Panel also infers that Respondent profits from the pop-up advertisements the consumer is inundated with when reaching the resulting search engine website.  Moreover, since the disputed domain names do not logically reference a search engine website, the Panel infers that Respondent purposefully uses Complainant’s BANKAMERICA and BANCAMERICA marks to generate a profit.  Respondent’s commercial use of the disputed domain names does not constitute rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated).

No evidence on the record supports a finding that Respondent is commonly known by the disputed domain names.  The disputed domain names predominantly display Complainant’s BANKAMERICA and BANCAMERICA marks and the Panel finds that Respondent could not be commonly known by the domain names.  Furthermore, all the domain names are registered to Out Island Properties, Inc., and thus the Panel presumes that Respondent is commonly known as Out Island Properties, Inc., and not by Complainant’s famous marks.  Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using domain names containing Complainant’s marks.  The fact that Respondent registered four domain names containing two similar versions of Complainant’s trademarks suggests that Respondent was aware of Complainant’s interests in the incorporated marks.  In addition, since the disputed domain names have no inherent connection to the use of the search engine website, such evidence supports the Panel’s inference that Respondent registered the disputed domain names to trade on the goodwill associated with the BANKAMERICA and BANCAMERICA marks.  Therefore, Respondent’s registration of the disputed domain names, despite knowledge of Complainant’s interests in the BANKAMERICA and BANCAMERICA marks, constitutes 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 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).

Furthermore, Respondent’s use of the disputed domain names warrants a finding of bad faith use.  Respondent is capitalizing on the goodwill of the BANKAMERICA and BANCAMERICA trademarks by diverting the disputed domain names to a search engine website that contains pop-up advertisements.  Since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.  Therefore, Respondent’s opportunistic use of the disputed domain names represents bad faith use under 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) is satisfied. 

DECISION

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

Accordingly, it is Ordered that the <bancamericaairports.com>, <airportbankamerica.com>, <airportbancamerica.com> and <bankamericaportal.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 3, 2003.

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