Generic Top Level Domain Name (gTLD) Decisions

DECISION

Bank of America Corporation v. Louise a/k/a Louise Nettelton

Claim Number: FA0305000157293

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones of Alston & Bird LLP.   Respondent is Louise Nettelton, of Westport, CT (“Respondent”) represented by Marcus Nettelton.

           

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bankofamericaenergy.com> registered with Register.com.

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 Richard B. Wickersham, (Ret.) as Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 12, 2003; the Forum received a hard copy of the Complaint on May 15, 2003.

On May 13, 2003, Register.com confirmed by e-mail to the Forum that the domain name <bankofamericaenergy.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 May 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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@bankofamericaenergy.com by e-mail.

A timely Response was received and determined to be complete on May 31, 2003.

On June 10, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to  Complainant.

           

PARTIES’ CONTENTIONS

A.   Complainant

Complainant Bank of America Corporation (hereinafter “Bank of America” or “Complainant”) is the largest consumer bank in the United States and one of the world’s best-known financial institutions.  For several years, Complainant and one of its predecessors, BankAmercia Corporation, have exclusively used the service mark and trade name BANK OF AMERICA to identify their banking and financial services.  Complainant has also used the domain name <bankofamerica.com> in conjunction with its financial services.  Respondent “Louise aka Louise Nettelton,” acting in bad faith, has registered and is using the domain name <bankofamericaenergy.com> for commercial purposes to direct individuals to a search engine website that provides links to providers of financial services.  Respondent’s domain name, made the subject of this proceeding, is confusingly similar to Complainant’s BANK OF AMERICA mark and <bankofamerica.com> domain name, and Respondent has no pre-existing rights or legitimate interests in respect of said domain name.  Respondent’s actions fall squarely within the activity ICANN’s Uniform Domain Name Dispute Resolution Policy (“UDRP”) is intended to remedy.

           

B.   Respondent

The Respondent denies that she is using the subject domain name to direct individuals seeking Complainant’s website to a search engine website that provides a link to a variety of goods and services, including financial services.

The Respondent will establish beyond all reasonable doubt, using only evidence provided by the Complainant and its outside Counsel, that this is not the case, and further that the Complainant and/or the said Larry C. Jones should have known this statement and/or assertion was untrue at the time it was made and remains untrue.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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   Policy ¶ 4(a)(i).

Complainant has offered evidence that it owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BANK OF AMERICA mark (Reg. No. 853,860 registered July 30, 1968) related to commercial, savings, loan, trust departments, and credit financing banking services.  The Panel rules that Complainant’s trademark registration with the USPTO establishes its right in the BANK OF AMERICA mark with regard to Policy ¶ 4(a)(i).  See The Men’s Wearhouse, Inc. v. Brian 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”).

Complainant contends that Respondent’s <bankofamericaenergy.com> domain name is confusingly similar to Complainant’s BANK OF AMERICA mark because the disputed domain name appropriates Complainant’s entire mark and adds the generic term “energy” to the end of Complainant’s mark.  The Panel finds that the addition of the generic term “energy” does not sufficiently differentiate the domain name from the mark for the purpose of Policy ¶ 4(a)(i).   See 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 the Complainant combined with a generic word or term); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant; Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of Respondent’s website.

            Rights or Legitimate Interests   Policy ¶ 4(a)(ii).

Complainant asserts that Respondent has no rights to or legitimate interests in the <bankofamericaenergy.com> domain name because Respondent is not a bank, investment firm or other financial institution.  The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to a commercial website is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).   See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that 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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

Complainant contends that Respondent could not be commonly known by either BANK OF AMERICA ENERGY or <bankofamericaenergy.com> because Complainant’s BANK OF AMERICA mark is so widely known that no one else could claim to be commonly known by the mark.  The Panel finds that Respondent has failed to establish its rights to or legitimate interests in the disputed name with regard to Policy ¶ 4(c)(ii).  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also Foot Locker Retail, Inc. v. Bruce Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating that “[d]ue to the fame of Complainant’s FOOT LOCKER family of marks...and the fact that Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by” any of the disputed domain names prior to their registration and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).

            Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

           

Complainant appears to argue that Respondent’s registration and use of the <bankofamericaenergy.com> domain name constitutes bad faith registration and use because Respondent linked the disputed domain name to a commercial website.  The Panel concludes that Respondent’s use of the domain name is an attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences registration and use in bad faith under Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); also see State Farm Mut. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

Complainant cites a parenthetical for the proposition that its BANK OF AMERICA mark is widely known.  The Panel holds that Respondent had actual or constructive notice of Complainant’s rights in the mark when Respondent registered and used <bankofamericaenergy.com> domain name because of the fame of Complainant’s mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

FINDINGS AND DECISION

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

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

                                                                       

                                                                                    JUDGE RICHARD B. WICKERSHAM, (Ret.), Panelist

                                                                       

                                                                                                Dated: June 13, 2003