DECISION

Bank of America Corporation v. Your Finance

Claim Number:  FA0306000161322

PARTIES

Complainant is Bank of America Corporation, Charlotte, North Carolina

(“Complainant”) represented by Larry C. Jones, of Alston & Bird LLP.  Respondent is Your Finance, Reseda, California (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bankofamericamortgagerate.com>, registered with Go Daddy Software, Inc.

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 4, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <bankofamericamortgagerate.com> is registered with Go Daddy Software, Inc. and that 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 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 30, 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@bankofamericamortgagerate.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 8, 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 <bankofamericamortgagerate.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 <bankofamericamortgagerate.com> domain name.

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

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

FINDINGS

Complainant, Bank of America Corporation, is the largest consumer bank in the United States and one of the world’s best-known financial institutions.  Complainant holds several registrations for the BANK OF AMERICA mark throughout the world, including U.S. Patent and Trademark Office Registration No. 853,860, issued on July 30, 1968, which is registered on the Principal Register. 

Since 1928, Complainant and its predecessors in interest, have used the BANK OF AMERICA mark in commerce to promote, advertise and provide its banking and financial services.  Complainant also uses the BANK OF AMERICA mark in the <bankofamerica.com> domain name to promote Complainant’s wide variety of financial services on the Internet.

On February 3, 2003, Respondent registered the <bankofamericamortgagerate.com> domain name.  The web site located at the disputed domain name is titled “Welcome to the web site of www.bankofamericamortgage.com” and offers directions on how to “personalize your home page.”

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 its registration of the mark with the U.S. Patent and Trademark Office.  See The Men’s Wearhouse, Inc. v. Brian 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”).

Respondent’s <bankofamericamortgagerate.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark.  The disputed domain name contains Complainant’s entire mark.  Respondent merely added the descriptive financial term, “mortgage rate,” to Complainant’s mark.  The Panel finds that the inclusion of such generic terms is not sufficient to distinguish the disputed domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

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

Rights or Legitimate Interests

Respondent failed to submit a response in this proceeding.  Thus, the Panel may accept as true all reasonable allegations and inferences set forth by Complainant in its complaint.  See 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”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Respondent is not using the <bankofamericamortgagerate.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Respondent is using Complainant’s well-known BANK OF AMERICA mark to attract and direct Internet users to the web site hosted by the <bankofamericamortgagerate.com> domain name, which is not related to Complainant’s BANK OF AMERICA mark.  Thus, the Panel finds that Respondent’s use of the disputed domain name does not establish rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).  See 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”); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

There is no evidence showing that Respondent is commonly known by the <bankofamericamortgagerate.com> domain name.  Nothing in the WHOIS information indicates that Respondent is commonly known by the disputed domain name.  In addition, the fame surrounding Complainant’s mark supports the Panel’s reasonable inference that Respondent is not commonly known by the disputed domain name according 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 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 Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent creates a likelihood of confusion as to the source of sponsorship of its domain name when it uses Complainant’s well-known mark to attract Internet users to the web site located at the <bankofamericamortgagerate.com> domain name.  It is reasonable for the Panel to infer that Respondent is commercially profiting from its unauthorized use of Complainant’s mark.  Thus, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  SeeKmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Goto.com, Inc., v. Walt Disney Co., 200 F.3d 1199, 1206 (9^th Cir., 2000) (“With respect to Internet services, even services that are not identical are capable of confusing the public”); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Accordingly, 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 <bankofamericamortgagerate.com> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated:  July 21, 2003

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