DECISION

Bank of America Corporation v. Azra Khan

Claim Number: FA0205000114324

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <banckofamerica.com>, registered with Dotregistrar.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 17, 2002; the Forum received a hard copy of the Complaint on May 20, 2002.

On May 21, 2002, Dotregistrar confirmed by e-mail to the Forum that the domain name <banckofamerica.com> is registered with Dotregistrar and that Respondent is the current registrant of the name.  Dotregistrar has verified that Respondent is bound by the Dotregistrar 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@banckofamerica.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 Tyrus R. Atkinson, Jr., 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

The <banckofamerica.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark.

Respondent has no rights or legitimate interests in the <banckofamerica.com> domain name.

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

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns several registrations for its BANK OF AMERICA mark worldwide, including registration with the United States Patent and Trademark Office (Reg. No. 853,860 issued July 30, 1968).  Complainant also owns a registered trademark for BANK OF AMERICA in Pakistan, Respondent’s place of domicile (Reg. No. 49,304). 

Complainant is the largest consumer bank in the United States and one of the world’s best-known financial institutions.  Complainant spends tens of millions of dollars advertising its services under the BANK OF AMERICA mark.  Consequently, the mark has acquired very valuable goodwill for Complainant. 

Respondent registered the <banckofamerica.com> domain name on January 14, 2002.  Respondent uses the domain name to link Internet users to a website that offers subscriptions to financial related periodicals.  Complainant requested that Respondent discontinue use of the <banckofamerica.com> domain name, however, Respondent didn’t comply and never responded. 

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 its rights to the BANK OF AMERICA mark through registration in the United States, Pakistan, and other countries.

Respondent’s <banckofamerica.com> is confusingly similar to Complainant’s BANK OF AMERICA mark because the only difference is the misspelling of the word “bank.”  The misspelling of “bank” to “banck” is a common error and it does not create a distinct domain name.  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 domain name but nevertheless renders it confusingly similar to Complainant’s marks). 

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

Rights or Legitimate Interests

Complainant has established its rights in the BANK OF AMERICA mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume Respondent has no such rights in the disputed domain name.  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 Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <banckofamerica.com> domain name to link to a website where it offers to sell subscriptions to financial magazines.  By diverting Internet users who misspell Complainant’s mark to Respondent’s magazine sales website, Respondent attempts to capitalize on Internet users searching for Complainant.  Such use is not considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also 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).

Complainant never granted Respondent permission to use its BANK OF AMERICA mark.  Respondent is not a bank, investment firm, or other financial institution and is not commonly known by BANCK OF AMERICA or <banckofamerica.com>.  Thus, Respondent has not met the requirements of 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 interest 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 Respondent has no rights or legitimate interests in the disputed domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent uses the <banckofamerica.com> domain name to divert unsuspecting Internet users who misspell “bank” to a website that offers subscriptions to financial magazines.  The website will lead Internet users to be confused as to the affiliation Complainant has with the goods offered for sale.  Respondent’s behavior constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services) see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the Respondent and Complainant).

Furthermore, Respondent’s slight variation of Complainant’s famous BANK OF AMERICA mark in its domain name amounts to an opportunistic attempt to trade on Complainant’s goodwill.  Thus, Respondent registered the domain name in bad faith.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic 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 the requested relief should be hereby GRANTED.

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

Tyrus R. Atkinson, Jr., Panelist

Dated: July 5, 2002

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