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Generic Top Level Domain Name (gTLD) Decisions |
Bank of America Corporation v. Nobuyuki
Takahashi
Claim
Number: FA0309000197930
Complainant is Bank of America Corporation,
Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones, of Alston & Bird LLP. Respondent is Nobuyuki Takahashi, Shinjyuku-ku, Tokyo, Japan (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <thebankofamerica.com>, <securebankofamerica.com>,
<militarybankofamerica.com>, <bankofamericastock.com>,
<bankofamericamilitary.com>, <bankofamericalocations.com>,
<bankofamericalocation.com>, <bankofamericahomepage.com>,
<bankofamericahomeloan.com>, <bankofamericahome.com>,
<bankofamericacorporation.com>, <bankofamericacorp.com>,
<bankofamericacalifornia.com>, <bankofamericabillpay.com>
and <www-bofa.com>, registered with Wild West Domains, Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 22, 2003;
the Forum received a hard copy of the
Complaint on September 22, 2003.
On
September 22, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum
that the domain names <thebankofamerica.com>, <securebankofamerica.com>,
<militarybankofamerica.com>, <bankofamericastock.com>,
<bankofamericamilitary.com>, <bankofamericalocations.com>,
<bankofamericalocation.com>, <bankofamericahomepage.com>,
<bankofamericahomeloan.com>, <bankofamericahome.com>,
<bankofamericacorporation.com>, <bankofamericacorp.com>,
<bankofamericacalifornia.com>, <bankofamericabillpay.com>
and <www-bofa.com> are registered with Wild West Domains, Inc. and
that Respondent is the current registrant of the names. Wild West Domains, Inc.
has
verified that Respondent is bound by the Wild West Domains, 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
September 26, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 16, 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@thebankofamerica.com, postmaster@securebankofamerica.com,
postmaster@militarybankofamerica.com, postmaster@bankofamericastock.com,
postmaster@bankofamericamilitary.com,
postmaster@bankofamericalocations.com, postmaster@bankofamericalocation.com, postmaster@bankofamericahomepage.com,
postmaster@bankofamericahomeloan.com, postmaster@bankofamericahome.com, postmaster@bankofamericacorporation.com,
postmaster@bankofamericacorp.com,
postmaster@bankofamericacalifornia.com, postmaster@bankofamericabillpay.com
and postmaster@www-bofa.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
October 23, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Ralph Yachnin 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thebankofamerica.com>,
<securebankofamerica.com>, <militarybankofamerica.com>,
<bankofamericastock.com>, <bankofamericamilitary.com>,
<bankofamericalocations.com>, <bankofamericalocation.com>,
<bankofamericahomepage.com>, <bankofamericahomeloan.com>,
<bankofamericahome.com>, <bankofamericacorporation.com>,
<bankofamericacorp.com>, <bankofamericacalifornia.com>
and <bankofamericabillpay.com> are confusingly similar to
Complainant’s BANK OF AMERICA mark, and Respondent’s <www-bofa.com>
domain name is confusingly similar to Complainant’s B OF A mark.
2. Respondent does not have any rights or
legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bank of America Corporation, is the largest consumer bank in the United States,
and its services are advertised and promoted
under the BANK OF AMERICA and B OF
A marks. Complainant and its predecessors in interest have obtained numerous
registrations for
the BANK OF AMERICA mark (e.g. U.S. Reg. No. 853,860
and Japanese Reg. No. 3,176,418) and the B OF A mark (e.g. U.S. Reg. No.
847,761 and Japanese Reg. No. 4,376,643) worldwide. Complainant spends tens of
millions of dollars annually promoting
these marks. Complainant has registered
several domain names as part of its marketing program, including the
<bankofamerica.com>
and <bofa.com> domain names.
Respondent,
Nobuyuki Takahashi, registered the <www-bofa.com> domain name on
October 2, 2002, and the remainder of the disputed domain names on June 5,
2003, without license or authorization to
use Complainant’s registered BANK OF
AMERICA or B OF A marks for any purpose. As of August 28, 2003, Respondent used
the <www-bofa.com> domain name to host a webpage entitled “Blade
of Arcania,” which is not sponsored, approved, or promoted by Complainant in
any way.
As of August 28, 2003, the remainder of the disputed domain names
hosted a webpage which simply stated that “This web site has been
converted to
non-commercial use.”
Beginning on
August 21, 2003, 11 of the 15 disputed domain names (the <securebankofamerica.com>, <militarybankofamerica.com>,
<bankofamericastock.com>, <bankofamericamilitary.com>,
<bankofamericalocations.com>, <bankofamericalocation.com>,
<bankofamericahomepage.com>, <bankofamericahomeloan.com>,
<bankofamericahome.com>, <bankofamericacalifornia.com>
and <bankofamericabillpay.com> domain names) were all the subject
of an auction on eBay with an initial bid of $949.
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.
Complainant has
established rights in the BANK OF AMERICA and B OF A marks through registration
of the marks with the appropriate
governmental agencies worldwide, as well as
through widespread use of the marks in commerce. See 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 <thebankofamerica.com>,
<securebankofamerica.com>, <militarybankofamerica.com>,
<bankofamericastock.com>, <bankofamericamilitary.com>,
<bankofamericalocations.com>, <bankofamericalocation.com>,
<bankofamericahomepage.com>, <bankofamericahomeloan.com>,
<bankofamericahome.com>, <bankofamericacorporation.com>,
<bankofamericacorp.com>, <bankofamericacalifornia.com>
and <bankofamericabillpay.com>
domain names are each confusingly similar to Complainant’s BANK OF AMERICA
mark. Each of these domain names incorporate Complainant’s
entire BANK OF
AMERICA mark, and Respondent’s addition of either generic terms (such as
“location,” “military” or “corporation”),
terms descriptive of Complainant’s
services (such as “bill pay” or “home loan”) or an English article (the word
“the”) do not dispell
any confusing similarity between the domain names and
Complainant’s mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903
(WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a
Complainant’s registered mark is sufficient to
establish identity or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also PG&E
Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (“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”); see also Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with
a generic term that has an obvious relationship to
Complainant’s business).
Likewise,
Respondent’s <www-bofa.com> domain name is confusingly similar to
Complainant’s B OF A mark. This domain name also incorporates the entirety of
one of Complainant’s
registered marks, this time with the addition of the
“www-“ prefix. It is well established that a respondent that registers a domain
name that simply add the abbreviation for the World Wide Web to the front of a
complainant’s trademark do not create a domain name
that is unique from the
underlying mark. See Bank of Am.
Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that
Respondent’s domain name <wwwbankofamerica.com> is confusingly similar
to
Complainant’s registered trademark BANK OF AMERICA because it “takes advantage
of a typing error (eliminating the period between
the www and the domain name)
that users commonly make when searching on the Internet”); see also Marie
Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the
letters "www" are not distinct in the "Internet world" and
thus Respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to Complainant's MARIE CLAIRE trademark).
Accordingly, the
Panel finds that the disputed domain names are each confusingly similar to Complainant’s BANK OF
AMERICA and B OF A marks under Policy ¶ 4(a)(i).
Respondent did
not submit a Response to the Complaint in these proceedings. Because of the
fame surrounding Complainant’s marks, the
Panel chooses to view Respondent’s
lack of response as an admission that it lacks rights or legitimate interests
in the disputed
domain names. 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); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Furthermore,
Respondent has made neither a “bona fide” offering of goods or services nor any
“legitimate noncommercial or fair” use
at the disputed domain names. It’s only use
of the disputed domain names has consisted of token webpages bearing no
relation to the
BANK OF AMERICA mark. Without any evidence submitted by
Respondent to rely upon, the Panel finds that Respondent’s unauthorized use
of
Complainant’s marks to host websites that serve only to dilute that mark do not
evidence rights or legitimate interests in the
disputed domain names pursuant
to either Policy ¶ 4(c)(i) or (iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (“[U]se of complainant’s entire mark in infringing domain
names makes it difficult to infer a legitimate
use"); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's
website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored
by Respondent hardly seems legitimate”).
There is no
evidence before the Panel to support a finding that Respondent is “commonly
known by” anything but the name “Nobuyuki
Takahashi,” compelling the Panel to
find that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly
similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
disputed domain names under Policy
¶ 4(a)(ii).
Respondent’s <securebankofamerica.com>,
<militarybankofamerica.com>, <bankofamericastock.com>,
<bankofamericamilitary.com>, <bankofamericalocations.com>,
<bankofamericalocation.com>, <bankofamericahomepage.com>,
<bankofamericahomeloan.com>, <bankofamericahome.com>,
<bankofamericacalifornia.com> and <bankofamericabillpay.com>
domain name registrations were all offered for sale on eBay for at least $949,
an amount that the Panel finds to be far in excess
of any out-of-pocket expenses
Respondent would have incurred as a result of registering these domain names.
Given the fact that each
of these domain names infringe on Complainant’s
registered and famous BANK OF AMERICA mark, the Panel concludes that
Respondent’s
primary purpose in registering these domain names was to sell them
to Complainant or some other opportunistic third party, evidence
that these
domain names were registered and used in bad faith pursuant to Policy ¶
4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded,
are evidence of bad faith”); see also Wrenchead.com, Inc. v. Hammersla,
D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale
at an auction site is evidence of bad faith registration
and use); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n
determining whether Respondent has sought consideration in excess of its
out-of-pocket
costs, the Policy makes clear that only costs related to the
domain name are to be considered, and not those related to the creation
or
maintenance of the connected website”).
Furthermore, the fact that the dominant feature of each of the disputed
domain names is one of Complainant’s famous and registered
marks permits the
inferrence that Respondent was aware of Complainant’s rights in those famous
marks when it chose to register the
disputed domain names. The Panel finds that
Respondent’s registration of a series of domain names with knowledge of
Complainant’s
rights in the underlying marks, and its use of those domain names
to divert Internet users to content that only serves to dilute
Complainant’s
marks evidences bad faith registration and use of the domain names. See
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make
any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); 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).
The Panel thus
finds that Respondent registered and used the disputed domain names in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <thebankofamerica.com>, <securebankofamerica.com>,
<militarybankofamerica.com>, <bankofamericastock.com>,
<bankofamericamilitary.com>, <bankofamericalocations.com>,
<bankofamericalocation.com>, <bankofamericahomepage.com>,
<bankofamericahomeloan.com>, <bankofamericahome.com>,
<bankofamericacorporation.com>, <bankofamericacorp.com>,
<bankofamericacalifornia.com>, <bankofamericabillpay.com>
and <www-bofa.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 4, 2003
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