DECISION

Bank of America Corporation v. Islamic Bank of America a/k/a Hany Atchan

Claim Number:  FA0306000164305

PARTIES

Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”) represented by Larry C. Jones of Alston & Bird L.L.P.  Respondent is Islamic Bank of America a/k/a Hany Atchan, Woodbury, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <islamicbankofamerica.com> and <islamicbankofamerica.net>, registered with Register.Com.

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 June 13, 2003; the Forum received a hard copy of the Complaint June 16, 2003.

On June 16, 2003, Register.Com confirmed by e-mail to the Forum that the domain names <islamicbankofamerica.com> and <islamicbankofamerica.net> are registered with Register.Com and that Respondent is the current registrant of the names. Register.Com 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 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 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@islamicbankofamerica.com and postmaster@islamicbankofamerica.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 July 11, 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 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, <islamicbankofamerica.com> and <islamicbankofamerica.net>, are confusingly similar to Complainant’s BANK OF AMERICA mark.

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

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

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

FINDINGS

Complainant is the largest consumer bank in the U.S. and one of the world’s best-known financial institutions.  Complainant acquired the BANK OF AMERICA mark in 1998 through a series of mergers.  Complainant’s BANK OF AMERICA mark was registered with the U.S. Patent and Trademark Office on July 30, 1968 (Reg. No. 853,860).  According to records held by the U.S. Patent and Trademark Office, Complainant and Complainant’s predecessors have used the BANK OF AMERICA mark in commerce since 1928.

Complainant uses the <bankofamerica.com> domain name in conjunction with its financial services.  This domain name was created December 28, 1998. 

Respondent registered the <islamicbankofamerica.com> and <islamicbankofamerica.net> domain names December 6, 2000.  Respondent is using the disputed domain names to redirect Internet users to search engine websites that provide links to a variety of goods and services, including financial services.  Internet users who attempt to access the disputed domain names are exposed to a series of “pop-up” advertisements. 

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 BANK OF AMERICA mark through registration with the U.S. Patent and Trademark Office and by continuous use in commerce since the 1920’s.

The domain names registered by Respondent, <islamicbankofamerica.com> and <islamicbankofamerica.net>, are confusingly similar to Complainant’s BANK OF AMERICA mark because the disputed domain names merely add the descriptive word “Islamic” to Complainant’s mark and vary the generic top-level domain (i.e. “.net” and “.com”).  Neither Respondent’s variation of the generic top-level domains nor the addition of the descriptive word “Islamic” to Complainant’s mark is sufficient to prevent the Panel from finding that the disputed domain names are confusingly similar to Complainant’s mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainant’s THE BODY SHOP trademark).

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

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the mark used in its entirety in the disputed domain names. The Panel presumes that Respondent’s incorporation of Complainant’s mark into the disputed domain names was an attempt to commercially capitalize from the goodwill associated with the BANK OF AMERICA mark.  The Panel presumes further that Respondent is commercially benefiting through “kick-backs” from website vendors who receive visitors via the links provided on Respondent’s website and the “pop-up” advertisements.  Respondent’s attempt to commercially benefit through incorporation of Complainant’s mark into the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or 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 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 Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Further, the WHOIS information for the <islamicbankofamerica.com> and <islamicbankofamerica.net> domain names lists Respondent, Islamic Bank of America a/k/a Hany Atchan, as the registrant; however, it fails to establish that Respondent is an “individual, business, or other organization” commonly known by the disputed domain names.  Furthermore, Respondent is not affiliated with Complainant and the evidence fails to establish that Respondent is authorized or licensed to register or use domain names or marks that incorporate Complainant’s BANK OF AMERICA mark.  Therefore, Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Due to Respondent’s failure to respond to the allegations in the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using the disputed domain names.  Respondent did not controvert this allegation. The Panel is permitted to infer that Respondent knew or should have known about Complainant’s BANK OF AMERICA mark because the mark has been used in commerce since 1928, is registered with the U.S. Patent and Trademark Office, and Respondent’s disputed domain names fully incorporate the BANK OF AMERICA mark.  Registration of a domain name, despite knowledge of a Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Also, Respondent registered the disputed domain names and incorporated Complainant’s mark with the intent to commercially benefit from the goodwill associated with Complainant’s mark.  The Panel finds that Respondent attempted to commercially benefit from Complainant’s good name and goodwill by redirecting Internet users seeking Complainant’s services to Respondent’s own gain through advertisement websites and “kick-backs” from website vendors that received visitors through Respondent’s diversionary practice.  This use by Respondent of the disputed domain names constitutes bad faith pursuant to 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 State Farm Mut. Auto. 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).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <islamicbankofamerica.com> and <islamicbankofamerica.net> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 25, 2003.

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