DECISION

Bank of America Corporation v. Peter Carrington a/k/a Party Night, Inc.

Claim Number:  FA0306000161465

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <backofamerica.com>, registered with Key-Systems Gmbh d/b/a Domaindiscount24.Com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 3, 2003; the Forum received a hard copy of the Complaint on June 5, 2003.

On June 5, 2003, Key-Systems Gmbh d/b/a Domaindiscount24.Com confirmed by e-mail to the Forum that the domain name <backofamerica.com> is registered with Key-Systems Gmbh d/b/a Domaindiscount24.Com and that Respondent is the current registrant of the name. Key-Systems Gmbh d/b/a Domaindiscount24.Com has verified that Respondent is bound by the Key-Systems Gmbh d/b/a Domaindiscount24.Com 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 June 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 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@backofamerica.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 July 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 assertions:

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

2. Respondent does not have any rights or legitimate interests in the <backofamerica.com> domain name.

3. Respondent registered and used the <backofamerica.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant acquired the BANK OF AMERICA mark through a series of mergers in 1998.  Complainant, the largest consumer bank in the U.S., uses the BANK OF AMERICA mark to market its banking and financial services and has several registrations for the mark with the U.S. Patent and Trademark Office, including, Reg. No. 853,860 (issued July 30, 1968).  In addition, Complainant holds valid registrations for the BANK OF AMERICA mark in Respondent’s country of residence (Benelux Reg. Nos. 70.898, 153.782, and 648.961).

Complainant also has used the <BankofAmerica.com> domain name in conjunction with its financial services.

Respondent registered the disputed domain name on March 5, 2002.  Respondent is using the disputed domain name to redirect Internet traffic to <hanky-panky-college.com>, an adult oriented website.  Furthermore, when the disputed domain name is accessed, a series of “pop-up” advertisements and links for additional adult oriented websites appear. 

Also, Respondent has a history of registering domain names that infringe on Complainant’s rights in the BANK OF AMERICA mark.  See Bank of Am. Corp. v. Carrington, FA 118311 (Nat. Arb. Forum Oct. 7, 2002) (finding that Respondent’s domain names, <bankofaamerica.com>, <bankodamerica.com>, and <bankpfamerica.com> infringed on Complainant’s BANK OF AMERICA mark).

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 draw such inferences it 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 and/or Confusingly Similar

Complainant has established rights in the BANK OF AMERICA mark through registration with the U.S. Patent and Trademark Office, other recognized trademark authorities, and use of the mark in commerce. 

Respondent’s <backofamerica.com> domain name is confusingly similar to Complainant’s highly recognized BANK OF AMERICA mark because the disputed domain name merely misspells the word “bank” by replacing the “n” with a “c.”  Granted, the misspelling does create the word “back”; however, the misspelling does not circumvent Complainant’s rights in the mark nor avoid the confusingly similarity element of Policy ¶ 4(a)(i).  Respondent’s disputed domain name takes advantage of a misspelling of Complainant’s mark and confuses customers when they attempt to access Complainant’s website.  Therefore, the disputed name is confusingly similar to Complainant’s 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); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

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

Rights or Legitimate Interests

Complainant has proven its rights in the BANK OF AMERICA mark.  Complainant asserts that Respondent lacks valid or legitimate rights in the disputed domain name because Respondent capitalizes on Internet users who misspell Complainant’s mark when they attempt to access <bankofamerica.com>. 

Complainant has submitted uncontested evidence that indicates that Respondent is commercially capitalizing on a misspelling of Complainant’s mark by diverting Internet traffic to an adult oriented website.  Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

The WHOIS information for the <backofamerica.com> domain name indicates Respondent, Peter Carrington d/b/a Party Night, Inc., as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the <backofamerica.com> domain name.  Furthermore, Respondent is not affiliated with Complainant and the evidence fails to establish that Respondent is authorized or licensed to register or use domain names or marks containing the BANK OF AMERICA mark.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

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

Registration and Use in Bad Faith

Respondent has a history of registering domain names that infringe on Complainant’s rights in the BANK OF AMERICA mark.  This history is evidence that Respondent registered the disputed domain name with the knowledge of Complainant’s BANK OF AMERICA mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also 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").

Moreover, Respondent’s domain name tarnishes Complainant’s mark, because the disputed domain name is confusingly similar to Complainant’s mark and redirects Internet traffic to <hanky-panky-college.com>, an adult oriented website.  Also, the Panel presumes that Respondent has attempted to commercially gain from the confusingly similar domain name through this diversionary practice.  Respondent’s activities constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).

Finally, Respondent has engaged in the practice of “typosquatting” by using a domain name that contains a misspelling of Complainant’s BANK OF AMERICA mark with the purpose of diverting Internet traffic for commercial gain.  Respondent’s “typosquatting” constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); 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 ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 16, 2003

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