DECISION

Bank of America Corporation v. domain chronicle

Claim Number:  FA0308000178817

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC, USA (“Complainant”) represented by Larry C. Jones of Alston & Bird, LLP.  Respondent is domain chronicle, Xiamen, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eaglsbankofamerica.com>, registered with Onlinenic, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

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, Onlinenic, Inc., confirmed by e-mail to the Forum that the domain name <eaglsbankofamerica.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic, 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 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@eaglsbankofamerica.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 Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <eaglsbankofamerica.com>, is confusingly similar to Complainant’s EAGLS and BANK OF AMERICA marks.

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

3. Respondent registered and used the <eaglsbankofamerica.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. Complainant also holds registrations for the EAGLS mark, including U.S. Patent and Trademark Office Registration No. 2,376,711, issued on August 15, 2000.

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

Respondent, domain chronicle, registered the <eaglsbankofamerica.com> domain name on March 10, 2003, without license or authorization to use Complainant’s EAGLS or BANK OF AMERICA marks for any purpose. Respondent uses the disputed domain name to direct Internet users to a search engine that features hyperlinks to various providers of financial services. Additional pop-up advertisements are also displayed, including some for financial services.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the EAGLS and BANK OF AMERICA marks through registration of those marks with the U.S. Patent and Trademark Office, as well as through widespread and continuous use of those marks in commerce.

The domain name registered by Respondent, <eaglsbankofamerica.com>, is confusingly similar to Complainant’s EAGLS and BANK OF AMERICA marks. It merely combines two of Complainant’s registered marks and then removes the spaces between the words of the BANK OF AMERICA mark. After this cosmetic and inconsequential change, the disputed domain name remains confusingly similar to both of the underlying marks. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds that the <eaglsbankofamerica.com> domain name is confusingly similar to Complainant’s EAGLS and BANK OF AMERICA marks under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the EAGLS and BANK OF AMERICA marks.  Respondent uses a combination of Complainant’s EAGLS and BANK OF AMERICA marks to redirect Internet users to revenue-producing advertisements, many of them advertising the services of Complainant’s competitors. This use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Thus, Respondent’s conduct is not protected under the Policy. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name).

Given the fame of Complainant’s BANK OF AMERICA mark and the arbitrary nature of the EAGLS mark, the Panel infers that Respondent is not commonly known by the disputed domain name, rendering Policy ¶ 4(c)(ii) inapplicable to Respondent. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <eaglsbankofamerica.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that infringed on not one, but two of Complainant’s registered marks. Such registration demonstrates that Respondent knew of Complainant’s rights in its family of marks when it registered the disputed domain name and that Respondent acted in bad faith in registering the disputed domain name. Respondent’s subsequent use of the domain name, which takes advantage of the goodwill surrounding Complainant’s marks to siphon Internet users to advertisements, also constitutes evidence that the domain name is being used in bad faith. See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner…  Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”); see also Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith).

The Panel thus finds that Respondent registered and used the <eaglsbankofamerica.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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 <eaglsbankofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: September 22, 2003.

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