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Generic Top Level Domain Name (gTLD) Decisions |
Bank of America Corporation v. Rental
Properties-USA.com
Claim
Number: FA0308000178816
Complainant is Bank of America Corporation,
Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is RentalProperties-USA.com, Seattle, WA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bankofamerica-usa.com>, registered with Bulkregister.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 4, 2003; the
Forum received a hard copy of the
Complaint on August 6, 2003.
On
August 4, 2003, Bulkregister.com confirmed by e-mail to the Forum that the
domain name <bankofamerica-usa.com> is registered with Bulkregister.com
and that Respondent is the current registrant of the name. Bulkregister.com has
verified that
Respondent is bound by the Bulkregister.com 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
August 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
August 27, 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@bankofamerica-usa.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
September 10, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bankofamerica-usa.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 <bankofamerica-usa.com> domain name.
3. Respondent registered and used the <bankofamerica-usa.com>
domain name 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 a well-known international financial
institution. For decades, Complainant and one of its predecessors, BankAmercia
Corporation, have exclusively used the BANK OF AMERICA mark (e.g. U.S.
Patent and Trademark Office Registration No. 853,860, issued on July 30, 1968)
to identify their banking and financial services.
Complainant has also
registered the <bankofamerica.com> domain name and uses it in connection
with its financial services.
Respondent,
Rental Properties-USA.com, registered the <bankofamerica-usa.com>
domain name on March 14, 2003, and is not licensed or authorized to use
Complainant’s BANK OF AMERICA mark for any purpose. Respondent
is using the
disputed domain name to direct Internet users to a website that prominently
features links to the websites of third
party providers of financial services.
The website also displays the text “This Domain Name is for sale by its owner”
and provides
for a method of submitting a bid for the domain name registration
to Respondent.
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 mark through registration of the mark
with the U.S. Patent and Trademark
Office, as well as through continuous use of
the mark in commerce.
Respondent’s <bankofamerica-usa.com>
domain name is confusingly similar
to Complainant’s BANK OF AMERICA mark. It includes all of Complainant’s BANK OF
AMERICA mark and
makes it the dominant feature of the domain name. The
remainder of the domain name is just the geographical identifier “usa” off-set
by a hyphen, an addition which does not change the fact that the principal
element of the domain name is 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 Am. Online, Inc. v. Asian On-Line This
Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the
domain names, which consist of “ao-l” and geographic location are confusingly
similar
to Complainant’s mark).
Accordingly, the
Panel finds that the <bankofamerica-usa.com> domain name is confusingly similar to
Complainant’s BANK OF AMERICA mark under Policy ¶ 4(a)(i).
Respondent
clearly denotes at its website that its domain name registration is for sale,
and goes so far so as to provide for a method
of submitting bids. As any value
in the domain name stems from Respondent’s use of Complainant’s BANK OF AMERICA
mark, the Panel
infers that Respondent’s ultimate goal in registering the
disputed domain name was sale of its domain name registration to Complainant.
Respondent’s willingness to sell its domain name registration to the holder of
the trademark that it appropriated is not a bona fide
offering of goods or
services as contemplated by Policy ¶ 4(c)(i), and cannot be considered a
noncommercial or fair use of the domain
name under Policy ¶ 4(c)(iii), making
both of these “safe harbor” provisions inapplicable to Respondent. See
Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, Respondent’s apparent willingness
to dispose of
its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The fact that
Respondent uses the disputed domain name to lure Internet users (via the use of
Complainant’s mark) to a website that
provides hyperlinks to Complainant’s
competitors may be viewed as a simple method of compelling Complainant to
purchase the domain
name registration from Respondent. However, this is also
not a type of activity that would be protected under Policy ¶¶ 4(c)(i) or
(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name
to redirect Internet users
to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also
Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that Respondent had no rights or legitimate interests in a domain name
that used
Complainant’s mark to redirect Internet users to a competitor’s
website).
As Respondent seems predisposed to sell its domain name registration and
has not indicated otherwise in its WHOIS contact information,
the Panel infers
that Respondent is not commonly known by the disputed domain name, making
Policy ¶ 4(c)(ii) inapplicable to Respondent
as well. See Foot Locker
Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating
that “[d]ue to
the fame of Complainant’s FOOT LOCKER family of marks…and the fact that
Respondent’s WHOIS information reveals its name to be
“Bruce Gibson,” the Panel
infers that Respondent was not “commonly known by” any of the disputed domain
names prior to their registration,
and concludes that Policy ¶ 4(c)(ii) does
not apply to Respondent”); 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
<bankofamerica-usa.com> domain
name under Policy ¶ 4(a)(ii).
As stated above,
it appears that Respondent is attempting to capitalize on the fame of
Complainant’s BANK OF AMERICA mark in order
to sell a domain name registration
containing that mark to Complainant. Registering a domain name that contains
another’s trademark
with the intent of selling that registration to the holder
of that mark is evidence of bad faith registration and use pursuant to
Policy ¶
4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell
a domain [name] bad faith is some accompanying evidence
that the domain name
was registered because of its value that is in some way dependent on the
trademark of another, and then an offer
to sell it to the trademark owner or a
competitor of the trademark owner"); see also 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”).
The Panel thus
finds that Respondent registered and used the <bankofamerica-usa.com> domain name 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 <bankofamerica-usa.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 15, 2003
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