DECISION

Bank of America Corporation v. Chris Glenn

Claim Number:  FA0407000296608

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 Chris Glenn (“Respondent”), 8416 Quail Hollow Drive, Harrisburg, NC, 28075.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bankofamericasports.com> and <bankofamericaolympics.com>, registered with Go Daddy Software, 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 July 15, 2004; the Forum received a hard copy of the Complaint July 19, 2004.

On July 16, 2004, Go Daddy Software, Inc., confirmed by e-mail to the Forum that the domain names <bankofamericasports.com> and <bankofamericaolympics.com> are registered with Go Daddy Software, Inc., and that Respondent is the current registrant of the names. Go Daddy Software, Inc., verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 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@bankofamericasports.comand postmaster@bankofamericaolympics.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 August 13, 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 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. The domain names registered by Respondent, <bankofamericasports.com> and <bankofamericaolympics.com>, are confusingly similar to Complainant’s BANK OF AMERICA mark.

2. Respondent has no rights to or legitimate interests in the <bankofamericasports.com> and <bankofamericaolympics.com> domain names.

3. Respondent registered and used the <bankofamericasports.com> and <bankofamericaolympics.com> domain names 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 is sponsoring and has sponsored numerous sports teams and events, including the Olympics.  Complainant spends tens of millions of dollars annually promoting its products through sponsorships and other media advertising.

Complainant holds a trademark registration with the United States Patent and Trademark Office for the BANK OF AMERICA mark (Reg. No. 853,860 issued July 30, 1968).  Complainant and its predecessors have used this mark in commerce since at least April 1928.

Complainant’s main website is operated at <bankofamerica.com>.  Complainant’s website is used to promote Complainant’s wide variety of financial services.

Respondent registered the <bankofamericasports.com> and <bankofamericaolympics.com> domain names February 11 and 17, 2004, respectively.  These domain names that Respondent registered redirect Internet users to Respondent’s registrar’s home page and offer the domain names for sale. 

The website attached to the disputed domain names contains the following statement at the top of the page: “For Sale…Interested in buying this domain?  Inquire at: cglenn21@msn.com.”   

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 Complainant to 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 to 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, using extrinsic proof in this proceeding, that it holds the registration for the BANK OF AMERICA mark with the United States Patent and Trademark Office. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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 Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).

The <bankofamericasports.com> and <bankofamericaolympics.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark because the only difference is the mere addition of a generic term, “sports” or “olympics.”  The addition of a generic term to a third party’s markdoes not sufficiently differentiate a domain name from a trademark under the Policy.  See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

Complainant established that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark and domain names.  Respondent did not respond to the Complaint, which results in an implied admission that Respondent lacks rights and legitimate interests in the domain name.  Further, in such circumstances, the Panel may make reasonable findings that allegations in the Complaint are true.  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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

The only evidence in the record that relates to the Panel’s determination of whether Respondent is commonly known by the disputed domain names is the WHOIS registration information for the respective domain names.  However, the WHOIS information for the domain names lists the domain name registrant as Chris Glenn, not as “Bank of America sports” or “Bank of America Olympics.”  The Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").

Furthermore, the <bankofamericasports.com> and <bankofamericaolympics.com> domain names are confusingly similar to Complainant’s BANK OF AMERICA mark and are used to redirect Internet users to Respondent’s registrar’s home page, which offers the domain name registrations for sale.  Such offers consistently have been found to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Mothers Against Drunk Driving v. Hyun-Jun 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 Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding Respondent has no rights or legitimate interests where Respondent registered the domain name with intent to sell its rights).      

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

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using two domain names that contain in their entirety Complainant’s protected BANK OF AMERICA mark. Further, Respondent manifested intent to sell the disputed domain name registrations because the websites themselves declare: “For Sale.”  Given the long- standing use of the BANK OF AMERICA mark and the fame associated with the mark in the public’s mind, it is more likely than not that Respondent’s future sale of the domain name registrations was aimed at the deep pockets of Complainant’s business or one of Complainant’s competitors.  Without the benefit of a response offering an explanation to the contrary, the Panel finds that the circumstances sufficiently indicate that Respondent acquired the domain names primarily to sell the registration of the domain names to Complainant or one of Complainant’s competitors for a value in excess of out-of-pocket expenses directly related to the domain names, 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”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark”).

Additionally, Respondent’s registration of disputed domain names that incorporate Complainant’s well-known registered mark in its entirety along with generic terms suggests that Respondent knew of Complainant’s rights in the BANK OF AMERICA mark before registering the names.  Thus, the Panel finds that Respondent likely chose the <bankofamericasports.com> and <bankofamericaolympics.com> domain names based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

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 <bankofamericasports.com> and <bankofamericaolympics.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: August 27, 2004

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