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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Bank of
America Corporation v. Ed Babcock
Claim
Number: FA0406000288759
Complainant is
Bank of America Corporation (“Complainant”),
represented by Larry C. Jones, of Alston & Bird, LLP,
Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC
28280-4000. Respondent is Ed Babcock (“Respondent”), Box 51,
Wayne, PA 19087-0051.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bankofamericatower.com>
and <bankofamericatower.org>, registered with Go Daddy Software, Inc.
PANEL
Each of the
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has
no known conflict in serving as
Panelist in this proceeding.
David A. Einhorn (Chairperson), Honorable
Charles K. McCotter, Jr. and Linda M. Byrne as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 21, 2004; the Forum received
a hard copy of the
Complaint on June 23, 2004.
On
June 21, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <bankofamericatower.com>
and <bankofamericatower.org>
are registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
June 24, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 14,
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@bankofamericatower.com and
postmaster@bankofamericatower.org by e-mail.
A timely
Response was received and determined to be complete on July 14, 2004.
On July 23, 2004,
pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David A. Einhorn, Honorable Charles K.
McCotter, Jr. and Linda M. Byrne as Panelists.
Complainant requests that the domain names be transferred
from Respondent to Complainant.
Complainant Bank of America Corporation
(hereinafter “Bank of America” or “Complainant”) is the largest consumer bank
in the United
States and one of the world’s best-known financial
institutions. For several years,
Complainant and one of its predecessors, BankAmerica Corporation, have
exclusively used the service mark and trade
name BANK OF AMERICA to identify
their banking and financial services.
Complainant has also used the domain name
<bankofamerica.com> in
conjunction with its financial services.
Respondent Ed Babcock has registered and is using the domain names <bankofamericatower.com>
and
<bankofamericatower.org> for
commercial purposes to direct Internet users to a Web site that offers to sell
or lease the domain names. This Web
site is not in any way sponsored, approved, promoted by or associated with Bank
of America.
Bank of America obtained several registrations of its BANK OF
AMERICA mark throughout the world, including U.S. Service Mark Registration
No.
853,860, issued July 30, 1968. This
registration, now owned by Complainant, is incontestable and, as such, is
conclusive evidence of Complainant’s exclusive right
to use the BANK OF AMERICA
mark in commerce in the United States.
Complainant
also owns the domain name <bankofamerica.com>. The
<bankofamerica.com> domain name is used to direct Internet users to
Complainant’s web site. That web site
is an important part of Complainant’s marketing program and is used to promote
Complainant’s wide variety of financial
services. In advertising and promoting their services to the public under
their proprietary marks, trade names and domain names, Complainant
and its
predecessor have spent tens of millions of dollars annually.
Complainant
is or has been affiliated with several buildings that are commonly referred to
as “Bank of America Tower,” including prominent
buildings in Seattle,
Washington, Miami, Florida and Atlanta, Georgia.
Respondent
is using the subject domain names to
direct individuals seeking Complainant’s Web site to a Web site titled
“PriceLess-Domains” that includes the following statement:
“This domain name is
owned by PriceLess-Domains.com If you
are interested in leasing or purchasing this domain name click on the e-mail
icon.” This Web site is not in any way
sponsored, approved, promoted by or associated with Bank of America.
On
April 5, 2003 and April 29, 2003, Complainant contacted Respondent and
requested that Respondent discontinue use of the subject domain names.
Respondent has not responded to or complied with the demands in these
letters.
The
accused domain names are strikingly similar to Complainant’s BANK OF AMERICA
mark. In fact, they are identical to
Complainant’s BANK OF AMERICA mark except that they contain the additional term
“Tower.” Also, the term “Bank of
America Tower” is the name of prominent buildings affiliated with Complainant.
Respondent
is not a bank, investment firm or other financial institution, and Respondent
has no preexisting rights in “Bank of
America,” or “Bank of America Tower” as trademarks, service marks or
trade names. Hence, it may be presumed
that Respondent has no rights or legitimate interests in <bankofamericatower.com>
and <bankofamericatower.org> as domain names. See
Bank of Am. Corp. v. AnkofAmerica.com FA 105891, (Nat. Arb. Forum Mar. 19, 2002)(“Complainant’s BANK
OF AMERICA mark is so widely known that no one, other than Complainant,
can be
considered commonly known as <ankofamerica.com>”).
Respondent
did not register or begin using the subject domain names until no earlier than
December 25, 2003 – long after Complainant’s
BANK OF AMERICA mark acquired its
fame. Without any preexisting rights in
“Bank of America” or “Bank of America
Tower” as trademarks, service marks or trade names, it may be assumed
that Respondent adopted, registered and is using the subject domain
names
because of the fame and goodwill associated with Complainant’s BANK OF AMERICA
mark and the designation Bank of America Tower.
The Web site accessed through the subject domain
names also indicates that the subject domain names are for sale or lease. Registration of a domain name for the
primary purpose of selling the domain name, presumably for an amount that
exceeds Respondent’s
cost, is further evidence of bad faith use and
registration.
FINDINGS
While
Respondent argues that he has been attempting to sell the domain names to the
owners of the various Bank of America Towers and
not to Complainant, his own
Exhibit 11 attached to his response shows the Bank of America Plaza in Atlanta,
GA to be 50% owned by
Complainant.
Respondent has not proven that Complainant has no ownership interest in
buildings named after Complainant. This
Panel therefore finds that the offering for sale of the domain names by
Respondent to the owners of the Bank of
America Towers essentially constitutes offers of sale to Complainant.
Respondent contends that, contrary to the
allegation of Complainant, he did in fact respond to Complainant’s cease and
desist letter. Said alleged response,
attached as Exhibit 12 to Respondent’s response, consists of a handwritten
letter which is generally illegible
and which contains multitudes of apparently
intentionally misspelled words. This
Panel finds this letter to be tantamount to no response to the cease and desist
letter.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(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.”
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;
(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 satisfactorily established rights in the BANK OF AMERICA mark as
established by its registration with the United States
Patent and Trademark
Office.
Respondent’s domain names <bankofamericatower.com> and <bankof americatower.org> are confusingly similar to Complainant’s
mark because they fully incorporate the mark with the addition of the generic
term “tower.” See Reliant Energy, Inc.
v. Graeter, D2001-0246 (WIPO Apr. 30, 2001), wherein the domain names
<reliantenergystadium.com>, <reliantenergycenter.com>,
<reliantenergydome.com>
and <reliantenergyfield.com> were all found
confusingly similar Complainant’s RELIANT ENERGY trade name and trademarks.
Therefore,
Complainant has established ¶ 4(a)(1) of the Policy.
Rights or
Legitimate Interests
Respondent has
not established any trademark or service mark rights in the term
“bankofamericatower,” and Respondent has admitted
that he is not commonly known
by that name in connection with a bona fide offering of goods or services.
Thus,
Respondent has not demonstrated rights or legitimate interests in the term at
issue. See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), wherein it was
found that no rights or legitimate interest existed where Respondent was not
commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name.
Complainant
has therefore satisfied ¶ 4(a)(2) of the Policy.
Registration and
Use in Bad Faith
Since
Respondent has wholly appropriated Complainant’s mark, it can be inferred that
Respondent had notice of Complainant’s rights
in the domain name. Therefore, Respondent’s registration and
subsequent use of the domain names <bankofamericatower.com>
and <bankofamericatower.org>
were in bad faith. See Victoria’s Secret v. Hardin, FA
96694 (Nat. Arb. Forum Mar. 31, 2001), wherein it was found that, in
light of the notoriety of Complainant’s famous marks, Respondent had
actual or
constructive knowledge of the Complainant’s marks and that such knowledge
constituted bad faith.
Furthermore,
this Panel is of the opinion that the domain names are so obviously connected
with Complainant’s famous mark that their
very use by another entity with no
connection to the Complainant suggests “opportunistic bad faith”. See
Parfums Christian Dior S.A. v. cia
Quintas and Christiandior.net, D2000-0226 (WIPO May 17, 2000); Ponsardin v. The Polygenix Group Co.,
D2000-0163 (WIPO May 1, 2000).
It
is also of importance that Respondent has registered the domain names <bankofamericatower.com> and <bankofamericatower.org> primarily
for the purpose of selling them to Complainant or to others. This constitutes bad faith pursuant to
Policy ¶ 4(b)(1).
Finally,
Respondent’s failure to respond to Complainant’s cease and desist letter other
than with an illegible, nonsensical response
is also an indicium of bad faith.
Therefore,
Complainant has satisfied ¶ 4(a)(3) of the Policy.
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 <bankofamericatower.com>and <bankofamericatower.org>
domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn,
Panelist (Chairperson)
Dated: August 13,
2004
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