DECISION

Bank of America Corporation v. Alvaro Collazo

Claim Number:  FA0403000248681

PARTIES

Complainant is Bank of America Corporation (“Complainant”), represented by Larry C. Jones, of Alston & Bird, LLP, 101 S. Tryon St., Ste. 4000, Charlotte, NC 28280-4000.  Respondent is Alvaro Collazo (“Respondent”), Manuel Oribe 2028, Tarariras, Colinia 7000.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bankofamerics.com>, < bankofamericq.com>, <bankofameriva.com>, < bankofamerixa.com>, < bankofameruca.com> and <vbankofamerica.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.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 March 19, 2004; the Forum received a hard copy of the Complaint on March 22, 2004.

On March 19, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <bankofamerics.com>, < bankofamericq.com>, <bankofameriva.com>, < bankofamerixa.com>, < bankofameruca.com> and <vbankofamerica.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 March 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 2004 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@bankofamerics.com, postmaster@bankofamericq.com, postmaster@bankofameriva.com, postmaster@bankofamerixa.com, postmaster@bankofameruca.com, and postmaster@vbankofamerica.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 April 28, 2004, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark.

2. Respondent does not have any rights or legitimate interests in the <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names.

3. Respondent registered and used the <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names in bad faith.

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

FINDINGS

Complainant, Bank of America, is the largest consumer bank in the United States and one of the world’s best-known financial institutions. In September 1998, BankAmerica merged with NationsBank, resulting in the foundation of Complainant. BankAmerica was one of the world’s best-known financial and banking services organizations at the time of the 1998 merger.

Complainant holds a trademark registration with the United States Patent and Trademark Office for the BANK OF AMERICA mark (Reg. No. 853,860, issued July 30, 1968).

Complainant, and one of its predecessors, BankAmerica Corporation, have exclusively used the mark and trade name BANK OF AMERICA to identify their banking and financial services. For many years prior to the merger, BankAmerica provided financial and banking services worldwide and used the BANK Of AMERICA mark in connection with its business. Due to longstanding and continuous use, Complainant’s BANK OF AMERICA mark is well-known and respected.

Complainant’s main website is operated at the <bankofamerica.com> domain name.

Respondent registered the disputed domain names on September 17, 2003, December 30, 2003, December 18, 2003, December 30, 2003, December 28, 2003, and December 30, 2003, respectivly. Respondent is using the domain names to redirect Internet users to a variety of third-party websites, including search services and websites that offer financial services.

 

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 that it has rights in the BANK OF AMERICA mark through registration with the United States Patent and Trademark Office and through the use of its mark in commerce for the last twenty-six years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s domain names are confusingly similar to Complainant’s BANK OF AMERICA mark because the <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names merely incorporate misspellings of the word “America” by substituting one letter in the word “America” with an incorrect letter. In addition, one of the domain names adds the letter “v” before Complainant’s entire mark. The mere substitution of a letter, constituting a misspelling of a mark, and the addition of a letter to a registered mark both render Respondent’s domain names confusingly similar to Complainant’s mark with regard to Policy ¶ 4(a)(i). See also 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); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain names. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimates interest is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See 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); see also 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.”).

Respondent is using the <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names to divert Internet traffic intended for Complainant to a website that provides links to a variety of third-party websites, including websites that offer financial services. Respondent’s use of domain names that are confusingly similar to Complainant’s BANK OF AMERICA mark to redirect Internet users interested in Complainant’s services to a commercial website that offers search services for and links to third-party websites that provide similar financial services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain name 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

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

Registration and Use in Bad Faith

Respondent has registered the domain names for commercial gain. Respondent’s domain names divert Internet users wishing to search under Complainant’s BANK OF AMERICA mark to Respondent’s commercial websites through the use of domain names that are confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly benefiting from the goodwill associated with Complainant’s mark. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Furthermore, Respondent registered the <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s websites that directly compete with Complainant by offering banking and financial services similar to Complainant’s services. Registration of domain names for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

Furthermore, Respondent has engaged in a practice called “typosquatting.” This practice diverts Internet users who misspell Complainant’s mark to a website sponsored by Respondent for Respondent’s commercial gain. Respondent is attempting to divert Internet users intending to search under Complainant’s mark who misspell the word “America” in Complainant’s mark. The practice of “typosquatting” itself evidences bad faith registration and use of a domain name 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 Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of a web-address,” evidence that the domain name was registered and used in bad faith).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> domain names be TRANSFERRED from Respondent to Complainant.

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

Dated:  May 5, 2004

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