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Generic Top Level Domain Name (gTLD) Decisions |
Bank of America Corporation v. Todd
Beitler
Claim Number: FA0306000161463
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, NC (“Complainant”) represented by Larry C. Jones of Alston & Bird, LLP. Respondent is Todd Beitler, Boca Raton, FL
(“Respondent”) represented by Andrew DS
Lothian of Demys Limited.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bankofamericaforeclosures.com>
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
P.
Jay Hines, Hon. Carolyn Marks Johnson, and David E. Sorkin as Panelists.
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 <bankofamericaforeclosures.com>
is 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 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@bankofamericaforeclosures.com by e-mail.
A
timely Response was received and determined to be complete on June 30, 2003.
Additional
Submissions were received from Complainant and Respondent on July 7, 2003, and
July 8, 2003, respectively, in accordance
with the Forum’s Supplemental Rule 7.
On July 10, 2003, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed P. Jay
Hines, Hon. Carolyn Marks Johnson, and David E. Sorkin as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that the disputed domain name <bankofamericaforeclosures.com>
is confusingly similar to its BANK OF AMERICA service mark; that Respondent has
no rights or legitimate interests in respect of the
disputed domain name; and
that Respondent registered and is using the disputed domain name in bad faith.
B.
Respondent
Respondent
contends that the manner in which he uses the disputed domain name does not
render it confusingly similar to Complainant’s
mark. Respondent further contends that he has rights or legitimate
interests based upon his use of the disputed domain name to direct visitors
to
ForeclosureNet.net, a web site that offers data on real estate foreclosures;
and that his intent to use the domain name for this
purpose precludes a finding
of bad faith.
C.
Additional Submissions
Each
of the parties has submitted an Additional Submission that primarily responds
to arguments made by the other. The
Panel has reviewed these Additional Submissions, and a majority of the Panel is
of the view that it ought to consider them, although
the Panel unanimously agrees
that they contain no information that affects the outcome of the case.
FINDINGS
The Panel finds that the disputed domain
name is confusingly similar to Complainant’s mark, that Respondent lacks rights
or legitimate
interests in respect of the disputed domain name, and that the
disputed domain name was registered and has been used in bad faith. The Panel finds that Complainant has not
used the Policy in bad faith to attempt to deprive Respondent of the domain name.
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.
A domain name that appends a trademark to
a common term that does not obviously disassociate the domain name from the
mark normally
will be deemed confusingly similar to the mark. While “foreclosures” may not be strictly
within the classes of services offered by Complainant, the concept is
sufficiently closely
related to Complainant’s business to create a likelihood
of confusion. The Panel finds that the
disputed domain name is confusingly similar to Complainant’s BANK OF AMERICA
service mark.
Respondent claims that he uses the
disputed domain name to direct visitors to ForeclosureNet.net, a web site
operated by his company
that offers data on real estate foreclosures. He describes the data offered on this site
as “qualified” by lender, although he does not explain precisely what this
means, and it
was not readily apparent to the Panel based upon a cursory review
of the site. In any event, it appears
that the site offers data on foreclosures from a variety of lenders. Respondent describes the site’s database as
containing “a large inventory of Bank of America foreclosed property records,”
but makes
no claim that the site specializes in such data. He accounts for this “large inventory” as
merely reflecting Complainant’s market share in consumer banking.
While a bona fide nominative fair use of
a trademark in a domain name may well give rise to rights or legitimate
interests, the Panel
is unpersuaded that Respondent’s use of the domain name in
this case qualifies under that rule.
Even if the Panel accepts Respondent’s claim that some potential
customers are apt to search for foreclosure data by lender, Respondent
appears
to be using the disputed domain name, and therefore Complainant’s mark, to
divert customers to a much broader offering, and
one in which the presence of
data pertaining to Complainant is merely incidental. Cf. Ty Inc. v. Perryman,
[2002] USCA7 474; 306 F.3d 509, 514 (7th Cir. 2002) (holding that defendant was properly enjoined
from using BEANIES mark in connection with products other than
genuine Beanie
Babies), cert. denied, 123 S. Ct.
1750 (2003). This conclusion is
reinforced by the fact that the ForeclosureNet.net site itself does not appear
to use Complainant’s mark at all,
except as a data field within records.
The Panel rejects Respondent’s claim of
bona fide use, and accordingly finds that the Respondent lacks rights or
legitimate interests
in respect of the disputed domain name.
Respondent registered and is using the
disputed domain name to divert Internet users to his company’s commercial web
site, which offers
information on real estate foreclosures. On balance it appears likely to the Panel
that Respondent’s use of Complainant’s mark in a domain name that redirects to
this site
will confuse many Internet users as to its source, sponsorship,
affiliation, or endorsement, a basis for finding bad faith under
paragraph
4(b)(iv) of the Policy. The Panel finds
that the disputed domain name has been registered and is being used in bad
faith.
Reverse
Domain Name Hijacking
Having found that Complainant has proved
all three elements required under the ICANN Policy, the Panel concludes that
the Complaint
was not brought in bad faith.
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 <bankofamericaforeclosures.com>
domain name be TRANSFERRED from Respondent to Complainant.
P. Jay Hines, Presiding Panelist
Dated: July 24, 2003
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URL: http://www.worldlii.org/int/other/GENDND/2003/770.html