If you register domains that infringe on corporate names and brands, you are a damn cybersquatter – no ifs and buts.
In the case of the domain BankOfAmerica.mx, the registrant put it up for sale on DAN.com. It’s surprising to see that there is no filtration in place for famous brands and marks such as the “Bank of America” name.
The ensuing UDRP at the WIPO listed the locale of the Respondent in China – no surprises there. The not so fun part: The Complainant pointed out the DAN.com broker as part of the dispute:
“In addition, the web page to which the disputed domain name resolves contains information that the “owner” and “expert” related to the disputed domain name are stated to be “DomainForSale | Trusted Seller ”and“ Laszlo | I have successfully helped over 10,000 buyers, ”respectively. On top of that website is visible a logo with the caption: “DAN fast & easy domain transfer” ( DAN transfer fast and easy domain ), which forms a hyperlink that redirects the Internet user to the website to which solves the domain name <dan.com>, corresponding to a portal for buying and selling different domain names.”
The Respondent was mentioned as a repeat offender, and the sole panelist at the WIPO ordered the domain name BankOfAmerica.mx to be transferred. Full details follow in English, or read the original in Spanish.
WIPO Arbitration and Mediation Center
Decision of the Group of Experts
Bank of America Corporation v. Sun Qifeng
Case No. DMX2020-00011. The Parties
The Promoter is Bank of America Corporation, United States of America (the “United States”), represented by Legarreta y Asociados, Mexico.
The Holder is Sun Qifeng, China.
2. The Domain Name and the Registrar
The Application is intended for the domain name <bankofamerica.mx> (the “disputed domain name”).
The Registry of the disputed domain name is Registry .MX (a division of NIC México) (“Registry .MX”). The Registrar of the disputed domain name is GoDaddy.com, LLC.
3. Procedural Iter
The Request was submitted to the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2020. On January 8, 2020, the Center sent Registry .MX, by email, a registration verification request. in relation to the disputed domain name. On January 21, 2020, Registry .MX sent the Center, by email, its response confirming that the Owner is the person listed as the registrant, in turn providing the contact details of the administrative, technical and billing contact.
The Center verified that the Application met the formal requirements of the Domain Name Dispute Resolution Policy for “.MX” (the “Policy” or “LDRP”), the Regulations for the Dispute Resolution Policy of domain names for “.MX” (the “Regulations”), and the Additional Regulations of the Center for the resolution of disputes regarding domain names (the “Additional Regulations”).
In accordance with Article 4 of the Regulations, the Center formally notified the Request to the Holder, beginning the procedure on January 30, 2020. In accordance with Article 5 of the Regulations, the deadline to answer the Request was set for 19 February 2020. The Holder did not reply to the Request. Consequently, the Center notified the Holder of his lack of personification and absence of response to the Request on March 2, 2020.
The Center appointed Kiyoshi Tsuru as the sole member of the Group of Experts on March 12, 2020, receiving the Declaration of Acceptance and Impartiality and Independence, in accordance with Article 9 of the Regulations. The Expert considers that his appointment complies with the rules of the procedure.
4. Factual Background
The Promoter is Bank of America Corporation, a financial institution that provides banking, investment, wealth management, and other financial products and services. La Promovente has operations in more than 35 countries and its clients are located in more than 150 countries.
La Promovente owns, among others, the following trademark registrations in Mexico:
Brand
Registry number
Registration date
Class
BANK OF AMERICA
188901
April 29, 1975
36
US TRUST BANK OF AMERICA PRIVATE WEALTH MANAGEMENT (AND DESIGN)
1141563
February 4, 2010
36
BANK OF AMERICA MERRILL LYNCH SETTING OPPORTUNITY IN MOTION (AND DESIGN)
1232884
August 12, 2011
36
BANK OF AMERICA MERRILL LYNCH TRADE PRO (AND DESIGN)
1256520
December 7, 2011
36
BANK OF AMERICA MERRILL LYNCH THE POWER OF GLOBAL CONNECTIONS (AND DESIGN)
1413358
November 26, 2013
36
BANK OF AMERICA MERRILL LYNCH MERCURY
1460743
June 5, 2014
9
The Promoter is the owner of the domain name <bankofamerica.com> registered on December 28, 1998, as well as the domain names <bankofamericamerrilllynch.com> and <bofaml.com> registered on September 14, 2008.
The disputed domain name was registered on January 19, 2019 and is currently parked and for sale on the website to which it redirects.
5. Arguments of the Parties
A. Promoter
The Promoter alleges in its Request the following:
That Promovente is one of the largest financial institutions in the world.
That the Promoter provides banking, investment, wealth management and other financial products and services, including investment and commercial banking.
That the Promovente is the largest bank holding company in the United States based on its assets, and the second largest bank in that country considering market capitalization parameters.
That in the United States alone, Promovente serves 49 million consumers and small businesses, and that it has approximately 5,000 retail banking offices.
That, with approximately 208,000 employees, the Promovente serves clients in more than 150 countries.
That the Promovente is widely known as one of the largest and most recognized companies in the world.
That the Promoter has received numerous honors and awards for its achievements, and that it has been ranked as one of the leading American corporations in terms of income.
That Promovente has participated in global advertising campaigns regarding its financial services in the form of advertisements in international magazines, newspapers, television, outdoor posters, billboards, online advertising, as well as through the sponsorship of important cultural activities, sports and philanthropic events.
That the advertising of the Promovente in 2017 amounted to USD 1,746 million.
I. Identity or similarity to the point of causing confusion
That the Promoter is the owner of different registrations that protect the BANK OF AMERICA brand in different countries of the world.
That the Promoter is the owner of multiple domain names that incorporate the BANK OF AMERICA brand, for example, <bankofamerica.com>, <bankofamericamerrilllynch.com> and <bofaml.com>, which it uses in connection with its financial services
That, in various proceedings before the Center, the Expert Groups have recognized and reflected in their decisions that the BANK OF AMERICA brand is famous.
That, as a result of Promovente’s marketing, advertising and promotional efforts and activities in relation to its BANK OF AMERICA brand, millions of people around the world have been exposed to said brand.
That the Promoter has gained notoriety and recognition among the public and in the financial industry, as well as among consumers of financial products and services.
That the disputed domain name turns out to be identical to the Promovente’s BANK OF AMERICA brand, by virtue of the fact that said brand is fully and completely included in it.
That the disputed domain name does not add additional nominative elements that may give it some degree of distinctiveness.
That adding the country code top level domain (“ccTLD”) “.mx” to the end of the disputed domain name does not provide any grammatical, phonetic, ideological, or graphic distinction.
That the users who access the disputed domain name will believe that it is sponsored by, or linked to, the Promoter.
II. Legitimate rights or interests
That, because the use and registration of the BANK OF AMERICA mark by the Promoter are prior to the registration of the disputed domain name, the burden of proving the existence of legitimate rights or interests in relation to the domain name in dispute falls on the Holder.
That the disputed domain name is not a legitimate name or nickname of the Owner and that the Owner has not been known by said disputed domain name.
That the domain name in dispute is not related to any right or legitimate interest of the Owner, since it is the name of a bank that enjoys fame and notoriety in the world.
That the Promoter has not granted a license, permission or other right by which the Holder may own or use any domain name that incorporates or imitates the BANK OF AMERICA brand of the Promoter.
That the Promoter does not sponsor or endorse the activities of the Owner in any way, and that it has not given its consent for it to use its brands.
That the Holder is not using the disputed domain name in connection with a bona fide offer of products or services and that he is not making a legitimate and non-commercial use of it.
That the Holder has registered the disputed domain name solely to obtain financial benefits by posing as the Promoter, deceiving Internet users.
That the Holder cannot demonstrate having any right or legitimate interest in relation to the disputed domain name.
III. Registration or use in bad faith
That the Owner has registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the prestige and reputation associated with the Promovente’s BANK OF AMERICA brand.
That the Holder is offering the disputed domain name for sale.
That the Owner is using, without authorization, the name and reputation of the Promoter’s BANK OF AMERICA brand, for its own benefit.
That the Holder has a long history of registering and using in bad faith domain names that incorporate well-known third-party brands, which have been the subject of various disputes, where the corresponding Expert Groups have ordered the transfer of the names domain in dispute, in favor of their legitimate owners.
B. Holder
The Holder did not reply to the Promoter’s allegations.
6. Discussion and conclusions
In accordance with article 1.a) of the Policy, the Promoter must prove that the following three elements concur, in order to obtain the transfer or cancellation of the disputed domain name:
(i) the disputed domain name is identical or similar in degree of confusion with respect to a registered product or service mark, registered commercial notice, denomination of origin or reservation of rights to which the Promoter has rights;
(ii) the Holder has no legitimate rights or interests regarding the disputed domain name;
(iii) the disputed domain name has been registered or is used in bad faith.
This Expert considers it appropriate to take as precedents some decisions issued under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). This takes into account that the LDRP is based on, and is a variant of, the UDRP, as well as the Synopsis of the opinions of the expert groups on certain issues related to the UDRP Policy, third edition (“Synopsis prepared by WIPO 3.0” ).
The Holder did not respond to the Request presented by the Promoter, so this Expert is in a position to take as true those statements of the Promoter that he considers reasonable (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc ., and Kentech , WIPO Case No. D2006-0292 ).
A. Identity or similarity in degree of confusion with respect to a registered product or service brand, registered commercial notice, designation of origin or reservation of rights over which the promoter has rights
The Promoter has proven to be the owner of exclusive rights to the BANK OF AMERICA brand, whose registrations in different parts of the world precede the date of registration of the disputed domain name.
The disputed domain name is identical to the Promovente’s BANK OF AMERICA brand, since it reproduces it in its entirety.
The inclusion of the ccTLD “.mx” obeys a standard technical requirement in the structure of the domain name system, therefore, it is irrelevant when evaluating the concurrence of identity or similarity in degree of confusion in this procedure ( see Ahmanson Land Company v. Vince Curtis , WIPO Case No. D2000-0859 ; and Heidelberger Druckmaschinen AG v. Alejandro Guadarrama Domínguez / SuNegocioEnInternet , WIPO Case No. DMX2006-0006 ).
Therefore, the first element of the Policy is updated.
B Legitimate rights or interests
In accordance with article 1.c) of the Policy, any of the following circumstances may serve to demonstrate that the Holder has legitimate rights or interests in a disputed domain name:
(i) before receiving any notice of the dispute, the disputed domain name has been used, or demonstrable preparations have been made for its use, or a name corresponding to the disputed domain name in connection with an offer of good faith of products or services or legally protected by some reservation of rights;
(ii) the Holder (as an individual, company or other organization) has been commonly known by the disputed domain name, even though he has not acquired registered product or service trademark rights, registered commercial notice, designation of origin or reservation of rights; or
(iii) legitimate and non-commercial or non-commercial use is made of the disputed domain name, without the intention of misleading consumers or misrepresenting the good name of the registered product or service brand, registered commercial notice, appellation of origin or reservation of rights in question for profit.
The Promoter affirms that the Holder has no legitimate rights or interests in relation to the disputed domain name, and that he has not granted the latter a license, permission, or any right to use the BANK OF AMERICA trademark.
The Promoter also asserts that the Holder is not using the disputed domain name in connection with a bona fide offer of products or services, that it is not known by the disputed domain name, and that it is not making legitimate use of it. commercial of this one. In addition, the Promoter has provided evidence that shows that it is the owner of several registrations of the BANK OF AMERICA trademark, in different jurisdictions, whose registration dates are earlier than the one in which the disputed domain name was registered.
The web page to which the disputed domain name resolves displays, among others, the legends “The bankofamerica.mx domain name is for sale!” and “Make an offer | My offer for this domain is: ”, where there is the possibility of participating in an auction on the disputed domain name, by offering an amount of money that must be greater than USD 100. After submitting an offer, the Applicant must complete a form with their name, email address and telephone number, as well as accept the Terms of Use, admitting that said offer is legally binding.
In addition, the web page to which the disputed domain name resolves contains information that the “owner” and “expert” related to the disputed domain name are stated to be “DomainForSale | Trusted Seller ”and“ Laszlo | I have successfully helped over 10,000 buyers, ”respectively. On top of that website is visible a logo with the caption: “DAN fast & easy domain transfer” ( DAN transfer fast and easy domain ), which forms a hyperlink that redirects the Internet user to the website to which solves the domain name <dan.com>, corresponding to a portal for buying and selling different domain names.
Because the disputed domain name is being offered for sale on the website to which it resolves, through an auction mechanism, the Expert considers that such conduct cannot be considered as a use or preparation of use for the use of the disputed domain name in connection with a bona fide offer of products or services (see section 2.2 of the Synopsis prepared by WIPO 3.0 ; see also ASOS plc v. Tonya L. Warner , WIPO Case No. DMX2019 -0030 ).
Furthermore, the Expert notes that in the record of the present case there is no evidence that the Holder is commonly known by the disputed domain name.
Likewise, the Holder has not denied the assertions and evidence presented by the Promoter, nor has he proven to have made any fair or non-commercial use of the disputed domain name. Therefore, the Holder’s conduct cannot confer on the latter any legitimate right or interest in the disputed domain name ( see section 2.2 of the Synopsis prepared by WIPO 3.0 ; see also LEGO Juris A / S v. DomainPark Ltd , David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master , WIPO Case No. D2010‑0138).
Due to the foregoing, the Expert considers that the Holder has not distorted the prima facie case that the Promoter has presented, in the sense that the Holder has no legitimate rights or interests with respect to the disputed domain name (see section 2.1 of the Synopsis prepared by WIPO 3.0 .
Therefore, the second element of the Policy is updated.
C. Registration or use of the domain name in bad faithArticle 1.b) of the Policy indicates some circumstances conducive to proving the registration or bad faith use of a disputed domain name:
(i) circumstances indicating that the disputed domain name has been registered or acquired primarily for the purpose of selling, renting or otherwise transferring the registration of the disputed domain name to the promoter who is the owner of the trademark. registered products or services, registered commercial notice, designation of origin or reservation of rights to a competitor of the promoter, for a certain value that exceeds the various documented costs that are directly related to the disputed domain name; or
(ii) the disputed domain name has been registered in order to prevent the owner of the registered product or service mark, registered commercial notice, designation of origin or reservation of rights from reflecting its name in a corresponding domain name, provided and when the owner has developed such conduct; or
(iii) the disputed domain name has been registered primarily for the purpose of disrupting the business of a competitor; or
(iv) the disputed domain name has been used intentionally in order to attract, for profit, Internet users to a website or any other online site, creating the possibility of confusion with the name of the promoter regarding the source, sponsorship, affiliation or promotion of the website or the online site or of a product or service or legally protected by any reservation of rights that appears on the website or on the online site.
The Policy establishes that, for the assumption of article 1.b) to be updated, it is sufficient to demonstrate that the Bad faith of the Owner took place in the registration or in the use of the disputed domain name. Therefore, it is up to the Expert to analyze whether the case file contains evidence that proves that the Owner registered, or that he is using the disputed domain name in bad faith.
La Promovente has presented evidence showing that its BANK OF AMERICA brand enjoys prestige and recognition as a leading brand in the global financial industry. In addition, there is evidence in the file of this case that proves that the trademark is registered in different parts of the world many years before the date of registration of the disputed domain name.
Therefore, the Expert considers it unlikely that the Holder was unaware of the BANK OF AMERICA brand that distinguishes the Promoter and its services, when registering the disputed domain name. Due to the presence that said brand has in the market, in the media and on digital platforms, it is not possible to argue that the registration of the disputed domain name has not happened with the Promoter and its BANK OF AMERICA brand in mind. The foregoing constitutes opportunistic conduct in bad faith registration of the disputed domain name by the Owner, in accordance with the Policy (see Myer Stores Limited v. Mr. David John Singh , WIPO Case No. D2001-0763 ; ALSTOM v . Domain Investments LLC , WIPO Case No. D2008-0287 and Nutricia International BV v. Eric Starling , WIPO Case No. D2015-0773 ).
The determination of bad faith in the registration of the disputed domain name is sufficient for compliance with the third element of the Policy. However, considering the conditions of this case, the Expert will proceed to analyze the use of the disputed domain name.
The Promoter has presented evidence that shows that the Owner has used the disputed domain name (which incorporates in its entirety the famous brand BANK OF AMERICA) intentionally in order to attract, for profit, Internet users to its website in which domain names are auctioned, including the one disputed in this procedure, and in which data is collected from potential acquirers. This conduct constitutes bad faith use pursuant to Article 1.b) iv) of the Policy (see Aveva Group Plc. V. Edward Kim , WIPO Case No. D2015-2349 ; Arriaga Asociados Asesoría Jurídico y Economico, SL v. GRPS 2000 , SL ., WIPO Case No. D2017-0458 ; MySpace, Inc. v. Mari Gomez , WIPO Case No. D2007-1231 ).
It should be noted that the Holder has a history of domain name registration cases incorporating third-party marks, in which the corresponding Expert Groups have determined that the Holder has registered and used said domain names in bad faith (see Badgley Mischka , LLC v. Sun Qifeng , WIPO Case No. D2018-2041 ; Amundi SA v. Sun Qifeng / Sunqifeng , WIPO Case No. D2015-2345 ; Aktiebolaget Electrolux AB v. Sun Qifeng , WIPO Case No. D2010-0633. Taking into account the Holder’s background, and that in the present case he has registered a famous brand such as BANK OF AMERICA, it is possible to determine the Holder’s bad faith in accordance with the provisions of article 1.b) ii) of the Policy (see Section 3.1.2 of the Synopsis prepared by WIPO 3.0 ; see also Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi , WIPO Case No. D2017-0391 ).
Therefore, the third requirement set forth in the Policy has been met.
7. Decision
For the reasons stated, in accordance with articles 1 of the Policy and 19 and 20 of the Regulations, the Expert orders that the disputed domain name <bankofamerica.mx> be transferred to the Promoter.
Kiyoshi Tsuru
Unique Expert
Date: March 29, 2020
