DECISION

Bank of America Corporation v. Peter Klika

Claim Number: FA0306000161458

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is Peter Klika, Mercer Island, WA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bancaamerica.com>, <banqueamerique.com> and <transnationbank.com>, registered with Enom, Inc.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 3, 2003; the Forum received a hard copy of the Complaint on June 5, 2003.

On June 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <bancaamerica.com>, <banqueamerique.com> and <transnationbank.com> are registered with Enom, Inc. and that the Respondent is the current registrant of the names. Enom, Inc. has 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 June 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 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@bancaamerica.com, postmaster@banqueamerique.com and postmaster@transnationbank.com by e-mail.

A timely Response was received and determined to be complete on June 25, 2003.

On June 30, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <bancaamerica.com>, <banqueamerique.com> and <transnationbank.com> domain names are confusingly similar to Complainant’s BANKAMERICA, BANCAMERICA, BANK OF AMERICA and NATIONSBANK marks.

2. Respondent does not have any rights or legitimate interests in the domain names.

3. Respondent registered and used the domain names in bad faith.

B. Respondent

Respondent contends that the <banqueamerique.com> domain name is not confusingly similar to Complainant’s BANKAMERICA and BANCAMERICA marks.  Respondent maintains that the <transnationbank.com> domain name is not confusingly similar to Complainant’s NATIONSBANK mark.

Respondent is willing to transfer the <bancaamerica.com> domain name to Complainant.

Respondent contends that it registered the disputed domain names because of their generic nature and future value to his law practice, which specializes in banking.

FINDINGS

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 its predecessors used the service marks and trade names BANKAMERICA, BANCAMERICA, BANK OF AMERICA and NATIONSBANK to identify their banking and financial services. 

BankAmerica and NationsBank obtained several registrations of their BANKAMERICA, BANCAMERICA, BANK OF AMERICA and NATIONSBANK marks throughout the world, including U.S. Service Mark Registration Nos. 965,288 issued July 31, 1973; 2,134,374 issued February 3, 1998; 853,860, issued July 30, 1968 and 1,976,832, issued May 28, 1996.  These registrations are now owned by Complainant.

The services of Complainant and its predecessors have been advertised and promoted extensively under the BANKAMERICA, BANCAMERICA, BANK OF AMERICA and NATIONSBANK marks worldwide in various forms of media.  Complainant also owns the domain names <bankamerica.com>, <bancamerica.com>, <bankofamerica.com> and <nationsbank.com>.

Respondent registered the <transnationbank.com> domain name on August 17, 2000, the <bancaamerica.com> domain name on May 15, 2002 and the <banqueamerique.com> domain name on May 28, 2002.

Complainant contends that Respondent is using the <bancaamerica.com>, <banqueamerique.com> and <transnationbank.com> domain names to direct individuals seeking Complainant’s website to search engine websites that include links to providers of a variety of goods and services, including financial services.  These websites are not in any way sponsored, approved, promoted by or associated with Bank of America.

Respondent, Peter Klika, is an attorney who represents both domestic and foreign banks and financial institutions.  He claims a legitimate interest in registering the disputed names.  He claims to have acted in good faith.  He says that he never offered to sell the disputed names, that he never created or authorized the creation of any websites for the disputed names, and that he never intended to divert internet users to another site.  Respondent contends that the “commercial” website posted for the disputed domain names is actually a placeholder page hosted by the domain name registrar.

Respondent has been an attorney since 1982.  He is licensed to practice in California, Washington, and other jurisdictions.  Prior to becoming an attorney he was a language and consular officer with the U.S. State Department.  His law practice emphasizes banking, real estate and bankruptcy law.  In anticipation of some of his clients forming subsidiaries or affiliates, he has registered a number of bank domain names in various languages.  At no time has he offered to sell any of the disputed names to Bank of America, any other bank, or any other person.

Respondent registered <bancaamerica.com> because it is Italian for America Bank.  At the time he registered it, he was unaware of the trademark BANCAMERICA.  Respondent is willing to transfer the <bancaamerica.com> domain name to Complainant.

Banque Amerique is French for America Bank.  Respondent argues that while <banqueamerique.com> may be similar to Complainant’s marks, it is not “confusingly similar.”  Furthermore, “BanqueAmerique” has at least six letters (“que” in both names) not found in Complainant’s marks. 

Respondent argues that <transnationbank.com> is not confusingly similar to NATIONSBANK.

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

Complainant has rights in the BANKAMERICA, BANCAMERICA and NATIONSBANKS mark through registration of these marks in the United States, as well as through widespread use of the marks in commerce.

Complainant urges that Respondent’s <bancaamerica.com> and <banqueamerique.com> domain names are confusingly similar to its BANKAMERICA and BANCAMERICA marks. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to the Complainant’s famous AMERICA ONLINE mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).  The Panel finds that the <bancaamerica.com> domain name is confusingly similar to Complainant’s BANCAMERICA mark.

However, the <banqueamerique.com> domain name is not confusingly similar to Complainant’s BANKAMERICA and BANCAMERICA marks. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter"); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).

Complainant argues that Respondent’s <transnationbank.com> domain name is confusingly similar to Complainant’s NATIONSBANK mark. 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).  However, the Panel finds that the <transnationbank.com> domain name is not confusingly similar to Complainant’s NATIONSBANK mark. See Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that Complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name <nationsbanking.com>); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied as to the domain names <banqueamerique.com> and <transnationbank.com>.  Because satisfaction of each element listed under paragraph 4(a) is mandatory, it is not necessary to pursue analysis under Policy ¶¶ 4(a)(ii) or (iii) as to these two domain names.  See Creative Curb v. Edgetec International Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).  However, Policy ¶ 4(a)(i) has been satisfied as to the domain name <bancaamerica.com>.

Rights or Legitimate Interests

Respondent specifically expresses the intent to transfer the <bancaamerica.com> domain name to Complainant.  Respondent’s willingness to transfer the disputed domain name to Complainant demonstrates that Respondent lacks any rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding that the Respondent’s willingness at the onset of the Complaint to transfer the domain names shows it lacks any legitimate interest or rights in the names).

The Panel finds that Respondent’s offer to transfer the domain names in addition to Complainant’s submissions of evidence establish Policy ¶ 4(a)(ii) as to the domain name <bancaamerica.com>.

Registration and Use in Bad Faith

Respondent’s offer to transfer the <bancaamerica.com> domain name to Complainant is evidence that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii) as to the domain name <bancaamerica.com>.

DECISION

The Panel concludes that relief shall be GRANTED as to the domain name <bancaamerica.com> and DENIED as to the domain names <banqueamerique.com> and <transnationbank.com>.

Accordingly, it is Ordered that the <bancaamerica.com> domain name be TRANSFERRED from Respondent to Complainant and that the <banqueamerique.com> and <transnationbank.com> registrations REMAIN with Respondent.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 8, 2003

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