DECISION

Bank of America Corporation v. Alvaro Collazo

Claim Number:  FA0408000319586

PARTIES

Complainant is Bank of America Corporation (“Complainant”), represented by Larry C. Jones, of Alston & Bird, LLP, Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC 28280-4000.  Respondent is Alvaro Collazo (“Respondent”), Manuel Oribe 2028, Tarariras, Colonia 70000.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bankofamera.com>, <bankfamerca.com>, <banbkofamerica.com>, and <bankoameric.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 31, 2004; the Forum received a hard copy of the Complaint on September 2, 2004.

On September 6, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <bankofamera.com>, <bankfamerca.com>, <banbkofamerica.com>, and <bankoameric.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 September 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 27, 2004 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@bankofamera.com, postmaster@bankfamerca.com, postmaster@banbkofamerica.com, and postmaster@bankoameric.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 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bankofamera.com>, <bankfamerca.com>, <banbkofamerica.com>, and <bankoameric.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark.

2. Respondent does not have any rights or legitimate interests in the <bankofamera.com>, <bankfamerca.com>, <banbkofamerica.com>, and <bankoameric.com> domain names.

3. Respondent registered and used the <bankofamera.com>, <bankfamerca.com>, <banbkofamerica.com>, and <bankoameric.com> domain names in bad faith.

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

FINDINGS

Complainant is a corporation duly organized and existing under the laws of the State of Delaware.  Complainant Bank of America Corporation is the result of a series of mergers that occurred in the late 1990s.  Specifically, in September 1998, an entity known as BankAmerica Corporation merged with an entity of the successor of NationsBank Corporation, resulting in an entity known as BankAmerica Corporation.  On April 28, 1999, the merged entity changed its name to Bank of America Corporation.  Complainant Bank of America Corporation is one of the largest consumer banks in the United States. 

Complainant’s predecessor BankAmerica Corporation provided a wide range of banking and financial services in various parts of the world prior to the 1998 mergers.  In connection with its offered services, BankAmerica extensively used the service mark and trade name BANK OF AMERICA to promote, advertise and provide its services.  BankAmerica obtained several registrations for its BANK OF AMERICA mark throughout the world, which Complainant now owns, including U.S. Service Mark Reg. No. 853,860, issued July 30, 1968 (used in connection with “commercial, savings, loan, trust departments, and credit financing banking services”).  Complainant also owns registrations for its BANK OF AMERICA mark in Uruguay, Respondent’s country of residence, including Reg. No. 228.245 issued February 5, 1979.

In order to market and promote Complainant’s financial services, Complainant also uses the domain name <bankofamerica.com>.

Respondent registered the domain name <banbkofamerica.com> on May 27, 2003 and registered the domain names <bankofamera.com>, <bankfamerca.com>, and <bankoameric.com> on June 29, 2004.  Respondent uses the disputed domain names to host websites that offer links to financial service providers.  Upon accessing such websites, Internet users are confronted with a variety of pop-up advertisements.

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 pursuant to paragraph 4(a)(i) of the Policy as the result of Complainant’s registration of the mark with both the U.S. and Uruguay governmental authorities.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

Recently, a panel confronted a similar case involving the same parties to the instant dispute.  In the previous case, the panel found that the domain names <bankofamerics.com>, <bankofamericq.com>, <bankofameriva.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> were confusingly similar to Complainant’s BANK OF AMERICA mark because the domain names merely substituted or added letters to Complainant’s mark.  Bank of Am. Corp. v. Collazo, FA 248681 (Nat. Arb. Forum May 5, 2004).  The instant case is not unlike the latter case.  Here, Respondent registered the domain name <banbkofamerica.com>, which simply contains the addition of the letter “b” to Complainant’s BANK OF AMERICA mark.  Consistent with the holding in the previous case, the Panel finds the domain name <banbkofamerica.com> is confusingly similar to Complainant’s BANK OF AMERICA mark pursuant to paragraph 4(a)(i) of the Policy.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

In addition, the domain names <bankofamera.com>, <bankfamerca.com>, <bankoameric.com> have each merely omitted two letters from Complainant’s BANK OF AMERICA mark.  Domain names that merely omit two letters from another’s mark have been found confusingly similar to such marks under the Policy.  Therefore, the Panel finds the domain names <bankofamera.com>, <bankfamerca.com>, <bankoameric.com> confusingly similar to Complainant’s BANK OF AMERICA mark pursuant to paragraph 4(a)(i) of the Policy.  See Target Brands, Inc. v. Zuccarini, FA 99683 (Nat. Arb. Forum Oct. 22, 2001) (“[T]he <marshalfield.com> domain name is confusingly similar to Complainant's [MARSHALL FIELD’S] mark because it is essentially the same minus two letters.”); see also MRA Holding, LLC v. Harem Internet Services, Inc., FA 140600 (Nat. Arb. Forum Feb. 25, 2003) (finding that the domain name <girgonewild.com> is confusingly similar to Complainant’s GIRLS GONE WILD mark because “Respondent merely dropped two letters”). 

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel accepts all reasonable allegations set forth in the Complaint as true since Respondent has failed to respond to the Complaint. Moreover, the Panel construes Respondent’s failure to respond as an implicit admission that Respondent lacks rights and 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

The disputed domain names resolve to websites that offer links to third-party financial service providers.  Respondent is using the disputed domain names to direct Internet users to websites that offer competing services with those offered by Complainant under its mark.  It is established that it is neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy to use a domain name that is confusingly similar to a third party’s mark in order to divert Internet users to other websites that compete with the goods or services offered under the third party’s mark.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent used the names to divert Internet users to a website that offered competing services with those offered by the complainant under its marks); see also Glaxo Group Ltd. v. Glenmore, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent was not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) because respondent used the domain name to take advantage of Complainant's mark by diverting Internet users to a competing commercial site).

Moreover, Respondent has registered four domain names that consist of common misspellings of Complainant’s BANK OF AMERICA mark, which is evidence that Respondent is engaged in the practice of typosquatting.  Typosquatting does not establish rights or legitimate interests in a domain name pursuant to paragraph 4(a)(ii) of the Policy.  See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) ("Respondent's use of the <my-seasons.com> domain name constitutes typosquatting [of Complainant's MYSEASONS mark] and such conduct is evidence that Respondent lacks rights or legitimate interests in the domain name."); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO Sept. 19, 2003) (finding that Respondent lacked rights and legitimate interests in the disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c.'"); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and <ltdcommodaties.com> disputed domain names were typosquatted versions of Complainant's LTD COMMODITIES mark and "Respondent's 'typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.").

As in the previous case that involved the parties to this dispute, there is nothing in the record to suggest that “Alvaro Collazo” is commonly known by the disputed domain names <bankofamera.com>, <bankfamerca.com>, <banbkofamerica.com>, and <bankoameric.com> pursuant to paragraph 4(c)(ii) of the Policy.  Bank of Am. Corp. v. Collazo, FA 248681 (Nat. Arb. Forum May 5, 2004); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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").

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Under paragraph 4(b)(iv) of the Policy, bad faith registration and use is established when a domain name registrant intentionally attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion with a complainant’s mark.  The fact that Respondent registered four domain names that are confusingly similar to Complainant’s BANK OF AMERICA mark establishes that Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark.  Furthermore, upon entering Respondent’s websites attached to the disputed domain names, Internet users are confronted with various pop-up advertisements, which establishes that Respondent is commercially profiting from the use of the disputed domain names.  Therefore, Respondent is in violation of paragraph 4(b)(iv) of the Policy.  See Kmart v. Khan, 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 ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).

Moreover, the fact that Respondent registered not one, but four domain names that include common misspellings of Complainant’s BANK OF AMERICA mark demonstrates that Respondent is simply engaged in standard typosquatting behavior.  Typosquatting, itself, is evidence of bad faith registration and use under paragraph 4(a)(iii) of the Policy.  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a typosquatted version of Complainant's DERMALOGICA mark and stating, "[t]yposquatting itself is evidence of bad faith registration and use pursuant to Policy 4(a)(iii)."); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names were typosquatted versions of Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks. "Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of typosquatting, in which Respondent has engaged, has been deemed behavior in bad faith.").

Complainant has established Policy ¶ 4(a)(iii).

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 <bankofamera.com>, <bankfamerca.com>, <banbkofamerica.com>, and <bankoameric.com> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  October 11, 2004

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