DECISION

Bank of America Corporation v. NationsBankCard a/k/a Technical

Claim Number:  FA0304000154529

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird LLP. Respondent is NationsBankCard a/k/a Technical, Camarillo, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nationsbankcard.com> and <nationsbankcard.net>, registered with Enom, 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 on April 14, 2003; the Forum received a hard copy of the Complaint on April 14, 2003.

On April 17, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <nationsbankcard.com> and <nationsbankcard.net> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. 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 April 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 2003 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@nationsbankcard.com and postmaster@nationsbankcard.net 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 May 16, 2003, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <nationsbankcard.com> and <nationsbankcard.net>, are confusingly similar to Complainant’s NATIONSBANK service mark.

2. Respondent has no rights or legitimate interests in the <nationsbankcard.com> and <nationsbankcard.net> domain names.

3. Respondent registered and used the <nationsbankcard.com> and <nationsbankcard.net> domain names in bad faith.

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

FINDINGS

Complainant, Bank of America Corporation, was formed from a series of mergers in 1998 when a successor of NationsBank Corporation merged with BankAmerica Corporation.  Complainant is the largest consumer bank in the United States and Complainant’s predecessor, NationsBank Corp., was one of the best-known financial institutions at the time of the 1998 merger.  Prior to 1998, NationsBank Corp. used the trade name NATIONSBANK to promote, advertise and provide its wide range of financial services.  Since the merger, Complainant has continued to offer the same services provided under the NATIONSBANK mark in the United States and other countries. 

Complainant owns rights in the NATIONSBANK mark through its service mark registration with the United States Patent and Trademark Office (U.S. Service Mark Reg. No. 1,976,832).  Complainant owns the domain name <nationsbank.com>, which is used to direct Internet users to Complainant’s <bankofamerica.com> website. 

Complainant’s services and its predecessor’s services have been advertised worldwide under the NATIONSBANK mark and variations thereof in various forms of media.  Complainant spends tens of millions of dollars annually in promoting financial services offered under its various trademarks and service marks, including the NATIONSBANK mark.  As a result, Complainant’s financial services and its predecessor’s services have become readily identifiable with the NATIONSBANK mark. 

Respondent registered the <nationsbankcard.com> and <nationsbankcard.net> domain names on November 22, 2002.  Respondent uses both domain names to direct Internet traffic to a generic search engine website.  The resulting website contains links for a variety of general subject matter, including headings for information regarding “Insurance,” “Financial Help,” “Automotive,” and “Travel.”  On December 17, 2002 and January 15, 2003, Complainant contacted Respondent requesting that the use of the disputed domain names cease and that the domain name registrations be transferred to Complainant. 

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 in this proceeding that it has rights in the NATIONSBANK mark through proof of service mark registration with the USPTO. 

The domain names registered by Respondent, <nationsbankcard.com> and <nationsbankcard.net>, wholly incorporate Complainant’s NATIONSBANK service mark with the addition of the word “card.”  Complainant operates in the consumer financial industry and offers credit card and cash card services.  Respondent’s addition of “card” to the NATIONSBANK mark suggests Complainant’s financial services; the disputed domain names are thus confusingly similar to Complainant’s mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

Rights to or Legitimate Interests

Complainant has submitted a prima facie Complaint, which includes Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i)-(iii).  Complainant’s allegations are enough to shift the burden to Respondent to come forward and articulate rights or legitimate interests in the disputed domain names.  However, Respondent failed to answer the Complaint.  The Panel may thus assume that Respondent lacks rights or legitimate interests in the disputed domain names.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

In addition, the Panel will accept all reasonable allegations as true, unless clearly contradicted by the evidence, and will draw all reasonable inferences in Complainant’s favor.  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent uses the <nationsbankcard.com> and <nationsbankcard.net> domain names to divert traffic to a generic search engine website, which contains a heading for links related to financial information entitled “Financial Help.”  The disputed domain names have no inherent connection to the generic search engine.  It is clear that the use of Complainant’s NATIONSBANK mark in the disputed domain names is to attract those interested in Complainant’s services to the search engine, creating increased traffic and generating greater profit.  This common infringing practice capitalizes on the goodwill of another entity’s trademark.  Respondent’s diversionary use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it does not represent a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Furthermore, Respondent has not come forward to establish that it is commonly known by the <nationsbankcard.com> and <nationsbankcard.net> domain names.  The Registrant Contact in the WHOIS information pages for the disputed domain names reflects “nationbankcard” as the party that registered the domain names.  However, given the establishment of the NATIONSBANK service mark, it is highly unlikely that Respondent’s common business identity would be the confusingly similar “nationbankcard” or “nationsbankcard.”  Moreover, use of the disputed domain names has no connection to the descriptive nature of the domain names.  Therefore, since no facts or circumstances have been presented as evidence to suggest that Respondent is commonly known by the disputed domain names, Policy ¶ 4(c)(ii) does not apply on Respondent’s behalf.  See 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; thus, Policy ¶ 4(c)(ii) is satisfied. 

Registration and Use in Bad Faith

Respondent’s diversionary use of the confusingly similar <nationsbankcard.com> and <nationsbankcard.net> domain names has a substantial likelihood of confusing consumers using Complainant’s NATIONSBANK mark to locate information on Complainant’s services and who ultimately end up at a generic search engine website.  The Panel presumes that Respondent profits from this use of the disputed domain names, because directing an infringing domain name to a generic search engine is a common practice by individuals attempting to capitalize on the goodwill of another entity’s trademark.  Respondent’s use of the disputed domain names is a common example of bad faith registration and use under Policy ¶ 4(b)(iv).  See Kmart v. Kahn, 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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <nationsbankcard.com> and <nationsbankcard.net> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 30, 2003.

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