Bankofamericaworldpoint.com

The timeline behind bankofamericaworldpoint.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Bank of America Corporation and FIA Card Services, National Association v. Laksh Internet Solutions Private Limited Claim Number: FA0809001224032 PARTIES Complainant is Bank of America Corporation and FIA Card Services, National Association ( “Complainants”), represented by Melissa G. Ferrario, of Womble Carlyle Sandridge & Rice, PLLC, North Carolina, USA. Respondent is Laksh Internet Solutions Private Limited (“Respondent”), India. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <bankofamericaworldpoint.com>, registered with Lead Networks Domains Pvt. Ltd. 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. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 11, 2008. On September 16, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <bankofamericaworldpoint.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 2008 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@bankofamericaworldpoint.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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, Bank of America Corporation. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <bankofamericaworldpoint.com> domain name is confusingly similar to Complainant Bank of America Corporation’s BANK OF AMERICA mark and Complainant FIA Card Services, National Association’s WORLD POINTS mark. 2. Respondent does not have any rights or legitimate interests in the <bankofamericaworldpoint.com> domain name. 3. Respondent registered and used the <bankofamericaworldpoint.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Bank of America Corporation, owns the BANK OF AMERICA trademark (Reg. No. 853,860 issued July 30, 1968 by the United States Patent and Trademark Office (“USPTO”)). Complainant uses its mark in its banking and financial services operations. Complainant, FIA Card Services, National Association, owns the WORLD POINTS trademark (Reg. No. 2,896,210 issued Oct. 19, 2004 by the USPTO). Complainant, which is owned by Complainant Bank of America Corporation, uses its mark in connection with its own banking and financial services. Respondent registered the disputed domain name on March 10, 2007, and is currently using the disputed domain name to resolve to a website that contains a search engine and third-party links and advertisements, some of which lead to Complainants’ direct competitors. Respondent also offered to sell the disputed domain name to Complainants for US $1,210.50. Respondent has been the respondent in other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those cases. See, e.g., Robert Half Int’l Inc. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, FA 1213844 (Nat. Arb. Forum Sept. 18, 2008); see also HLT Domestic IP LLC v. Laksh Internet Solutions Private Limited, FA 1214860 (Nat. Arb. Forum Sept. 9, 2008). 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 Complainants have established its rights in the BANK OF AMERICA and WORLD POINTS marks pursuant to Policy ¶ 4(a)(i) through registration of the marks with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Respondent’s <bankofamericaworldpoint.com> domain name includes Complainants’ entire BANK OF AMERICA mark, and the WORLD POINTS mark, while omitting the “s” from POINTS, and adding the generic top-level domain “.com.” The Panel finds that neither difference creates any meaningful distinction, and that therefore the disputed domain name is confusingly similar to the marks under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainants retains the initial burden in asserting a sufficient prima facie case supporting its allegations. Complainants have asserted that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Based on the Complaint at hand, the Panel finds that Complainants have successfully discharged their duties under this burden, and therefore Respondent is given the task of demonstrating its rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Complainants contend that Respondent is not commonly known by the disputed domain name. The Panel takes significant note of the fact that Respondent has failed to tender any response in this case. Implicit in this failure is Respondent’s overt lack of evidence that could be potentially construed in favor of Respondent. What this Panel is therefore destined to scrutinize is left within the Complaint and the WHOIS domain name registration information, neither of which favor Respondent. Moreover, the Panel is bereft of a showing of license, permission, or authority on behalf of Respondent to use Complainants’ marks in any fashion. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Respondent’s disputed domain name resolves to a website whose sole feature appears to be to display third-party advertisements and links. Some of these links lead Internet users to Complainants’ competitors. The Panel will not conclude that a respondent’s use of a confusingly similar disputed domain name to parade a list of third-party advertisements demonstrates in any way, shape, or form rights or legitimate interests in the disputed domain name. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), since Complainants’ marks are clearly the tools used by Respondent to garner attention to the corresponding website. Moreover, Respondent presumably receives referral fees of some sort for the placement of these advertisements on the corresponding website. Thus the disputed domain name does not represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names). Respondent has offered to sell Complainants the disputed domain name for US $1,210.50. The Panel finds that this willingness to sell the disputed domain name for a price well in-excess of the out-of-pocket registration costs evidences Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith The Panel finds that Respondent’s offer to sell the disputed domain name for an amount disproportionate to its registration costs constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Respondent has been the respondent in other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those cases. See, e.g., Robert Half Int’l Inc. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, FA 1213844 (Nat. Arb. Forum Sept. 18, 2008); see also HLT Domestic IP LLC v. Laksh Internet Solutions Private Limited, FA 1214860 (Nat. Arb. Forum Sept. 9, 2008). The Panel finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). The Panel finds that Respondent’s use of the disputed domain name to host third-party advertisements competitive with Complainants was intended primarily to disrupt Complainants’ business. As such, the Panel finds Respondent to have engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Respondent presumably receives commercial benefit through the receipt of referral fees. Thus, the Panel finds that Respondent’s use of the confusingly similar domain name has created a likelihood of confusion for Respondent’s monetary benefit as to the Complainants’ source and endorsement of the disputed domain name and corresponding website, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The Panel finds that Policy ¶ 4(a)(iii) has been 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 <bankofamericaworldpoint.com> domain name be TRANSFERRED from Respondent to Complainant Bank of America Corporation. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: November 5, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.