Generic Top Level Domain Name (gTLD) Decisions

DECISION

Bank of America Corporation v. dix, Inc. a/k/a James Dicks

Claim Number: FA0306000161459

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones of Alston & Bird, LLP. Respondent is dix, Inc. a/k/a James Dicks, Longwood, FL (“Respondent”) represented by James Dicks of dix, Inc.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <bankamericafx.com> and <bankamerica4x.com> registered with Register.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (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, Register.com confirmed by e-mail to the Forum that the domain names <bankamericafx.com> and <bankamerica4x.com> are 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 June 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 25, 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@bankamericafx.com and postmaster@bankamerica4x.com by e-mail.

A Response was received and determined to be complete on June 25, 2003. However, the hard copy of the Response was received after the deadline for a Response.    Even though the hard copy of the Response was not timely, it has been reviewed and considered by the Arbitrator.

On July 2, 2003,  pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends the domain names at issue are confusingly similar to Complainant’s marks; that Respondent does not have any rights or legitimate interests in the domain names at issue; and that Respondent registered and used the domain names at issue in bad faith.

B. Respondent

Respondent contends that Complainant’s allegations are not factual, are misleading with intent of bad faith, and are specifically defamatory in nature.

FINDINGS

Complainant is a Delaware corporation with its principal office in Charlotte, North Carolina, and is engaged in the business of banking and other financial services.

Through a series of mergers, BankAmerica merged with the successor of NationsBank, and the resulting merged entity was renamed BankAmerica Corporation.  The name was then changed to Bank of America Corporation.

Bank of America obtained several registrations for its BankAmerica and Bank of America marks, one issued in July, 1973 and the other in July, 1968.  These registrations owned by the complainant are incontestable, giving Complainant exclusive right to use the marks in commerce in the United State.

Complainant has also acquired common-law rights in these marks as proprietary trade names and service marks.  These rights extend to the exclusive right to use these marks in the United States and other countries.

Complianant has expended tens of millions of dollars advertising and promoting their services to the public under these marks.  The marks have acquired valuable goodwill and significance to the public.

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

A review of the evidence reveals that Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BANKAMERICA mark (Reg. No. 965,288 registered on July 31, 1973) related to banking, financing and other related services and the BANK OF AMERICA mark (Reg. No. 853,860 registered on July 30, 1968) in relation to commercial, savings, loan, trust departments and credit financing banking services.  Complainant has established that it has rights in the mark through registration with the USPTO. 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”).

The domain names at issue are confusingly similar to Complainant’s BANKAMERICA mark as the domain names consist of Complainant’s entire mark with the addition of “fx” and “4x” to the end of the mark. As the mark remains the principal feature of the domain name, the addition of “fx” and “4x” do not significantly differentiate the domain names at issue from Complainant’s mark as the mark remains the principal feature of the domain names. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).

Rights or Legitimate Interests

Respondent has presented no evidence to indicate that it is involved in the banking industry, or any other evidence to indicate its  rights to or legitimate interests in the domain names at issue because of the fame of Complainant’s BANKAMERICA mark.   See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on website that would justify use of the word NOKIA within the domain name).

The domain names at issue redirect Internet traffic to a website that includes links to websites in competition with Complainant’s services. Respondent’s use of the domain names is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of Respondent’s registration of the domain name it can be inferred that Respondent is attempting to capitalize on the confusion created by the domain name’s similarity to the mark).

Registration and Use in Bad Faith

Respondent’s commercial use of the domain names at issue suggests Respondent is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark, which is evidence of bad faith registration and use with regard to Policy ¶ 4(b)(iv). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Given the fame of Complainant’s mark,  Respondent should have known that Complainant had rights in the mark and Respondent’s registration of the domain names at issue demonstrates Respondent’s registration and use in bad faith for purposes of Policy ¶ 4(a)(iii). 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).

DECISION

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

Accordingly, it is Ordered that the <bankamericafx.com> and <bankamerica4x.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf, Panelist

Dated: July 21, 2003

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