DECISION

Bank of America Corporation v. Commercestream Corp.

Claim Number:  FA0312000218873

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 Commercestream Corp.  (“Respondent”), 1223 Wilshire Blvd., #1220, Santa Monica, CA 90403.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwbancamerica.com>, registered with Psi-Japan, 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 December 10, 2003; the Forum received a hard copy of the Complaint December 12, 2003.

On December 10, 2003, the Forum sent a Request for Registrar Verification to Psi-Japan, Inc., via e-mail, to confirm that the <wwwbancamerica.com> domain name is registered with Psi-Japan, Inc., and that Respondent is the current registrant of the name. No response to the Request for Registrar Verification was received from Psi-Japan, Inc by the Forum. The Forum then conducted its own WHOIS search of the <wwwbancamerica.com> domain name through Psi-Japan, Inc.’s standard WHOIS search utility, which confirmed the identity and contact details of the Respondent as the registrant of the <wwwbancamerica.com> domain name and also confirmed that the Registrar for the disputed domain name is in fact Psi-Japan, Inc.

On December 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 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 and administrative contacts, and to postmaster@wwwbancamerica.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 January 26, 2004, 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 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. The domain name registered by Respondent, <wwwbancamerica.com>, is confusingly similar to Complainant’s BANCAMERICA mark.

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

3. Respondent registered and used the <wwwbancamerica.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. Complainant uses many trademarks to denote its banking and financial services, including the BANCAMERICA mark (e.g. U.S. Reg. No. 2,134,374, registered on February 3, 1998). Complainant spends tens of millions of dollars annually promoting and advertising its services under the BANCAMERICA mark, and uses the mark as an important part of its marketing program on the Internet at the <bancamerica.com> domain name, which redirects Internet users to Complainant’s main website at the <bankofamerica.com> domain name.

Respondent, Commercestream Corp., registered the <wwwbancamerica.com> domain name on July 12, 2003, without license or authorization to use Complainant’s BANCAMERICA mark for any purpose. By August 27, 2003, the disputed domain name hosted a website for a company called “Clear Credit,” which provided credit reports. Complainant sent several cease and desist letters and Respondent removed the “Clear Credit” content from the disputed website but did not respond to Complainant’s letters in any way.

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 established by extrinsic proof in this proceeding that it has rights in the BANCAMERICA mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as by widespread use and promotion of the mark in commerce. See Men’s Wearhouse, Inc. v. 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.”).

The domain name registered by Respondent, <wwwbancamerica.com>, is confusingly similar to Complainant’s BANCAMERICA mark. But for the addition of the “www” abbreviation in front of Complainant’s BANCAMERICA mark, the disputed domain name is identical to Complainant’s mark, and it is well established that the “www” prefix does not sufficiently distinguish a domain name from a complainant’s mark for the purposes of Policy ¶ 4(a)(i).  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet.”).

Accordingly, the Panel finds that the <wwwbancamerica.com> domain name is confusingly similar to Complainant’s BANCAMERICA mark 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 mark contained in its entirety within the disputed domain name. Respondent’s decision to capitalize on the goodwill surrounding Complainant’s BANCAMERICA mark by registering a domain name that appropriates that mark and adds the “www” prefix to it is evidence in and of itself that Respondent lacks rights to and legitimate interests in the disputed domain name. Respondent’s use of the disputed domain name to drum up service for the “Clear Credit” company under these circumstances cannot be considered to fall within the ambit of Policy ¶¶ 4(c)(i) or (iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant); see also 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 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”).

No evidence before the Panel suggests that Respondent is “commonly known by” the disputed domain name and the Panel finds that Respondent typosquatted on Complainant’s mark in registering the disputed domain name.  These two factors lead the Panel to conclude that Respondent cannot avail itself of the provisions of Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).

Accordingly, the Panel finds that Complainant has rights to and legitimate interests in the disputed domain name and that Respondent does not under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the disputed domain name in bad faith. In simply adding the “www” prefix to Complainant’s registered BANCAMERICA mark, Respondent’s behavior indicates that it had actual knowledge of Complainant’s rights in the BANCAMERICA mark at the time that the disputed domain name was registered. Typosquatting of this nature is evidence that the domain name was registered in bad faith. Respondent’s subsequent use of the domain name to promote the services of the “Clear Credit” company, accomplished through the unauthorized use of Complainant’s mark, is sufficient grounds to find that the domain name was used in bad faith. See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that the absence of a dot between the “www”and “canadiantire.com” in the <wwwcanadiantire.com> domain name was likely to confuse Internet users and evidences bad faith registration and use of the domain name); see also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith); see also 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.”).

The Panel thus finds that Respondent registered and used the <wwwbancamerica.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 <wwwbancamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: February 9, 2004.

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