Bank of America Corporation v. Fluxxx, Inc.
Claim Number: FA0201000103809
Complainant is Bank of America Corporation, Charlotte, NC (“Complainant”). Respondent is Fluxxx, Inc., Fort Lauderdale, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationsbanking.com>, registered with Network Solutions.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 9, 2002; the Forum received a hard copy of the Complaint on January 14, 2002.
On January 11, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <nationsbanking.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 January 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2002 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 email@example.com 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 February 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
1. The domain name in dispute <nationsbanking.com> is nearly identical to Complainant’s mark NATIONSBANK. The only difference between the domain name and mark is the addition of the suffix “ing.”
2. By linking a nearly identical domain name to a website that offers sexually explicit videos, Respondent’s does not have a legitimate interest in the domain name.
3. Respondent has used <nationsbanking.com>, a nearly identical domain name, for commercial gain and Respondent has created a likelihood of confusion between the disputed domain name and Complainant’s famous mark NATIONSBANK as to the source or sponsorship of Respondent’s pornographic website.
No Response was received.
Bank of America is the largest consumer bank in the United States and one of the country’s best-known financial institutions. Before a merger in 1998, predecessor of Complainant was NationsBank Corporation. NationsBank provided a wide range of banking and financial services in the United States and throughout the world.
Complainant is the owner of the mark NATIONSBANK, registered on May 19, 1992, Registration Number 1,688,466. Services of Complainant and its predecessor have been and are being advertised worldwide under NATIONSBANK in various forms of media. Complainant uses the domain name <nationsbank.com> to direct users to its website <bankofamerica.com>. Complainant’s website offers a wide variety of financial services.
Respondent registered <nationsbanking.com> on October 23, 2001. Respondent is using the disputed domain name to redirect users to its own website located at <exittraffic.net>, which offers sexually explicit videos and materials.
The issue in this case is whether <nationsbanking.com> is identical or confusingly similar to Complainant’s mark, NATIONSBANK. If there is a similarity, a related question is whether there is the likelihood that the similarity would confuse the public. Complainant does not address this question in its Complaint except to suggest that there may be confusion between the disputed domain name and the mark due to the addition of the suffix “ing.” No instances of actual public confusion are alleged.
While Complainant has shown that it holds legal rights in a well-known mark, the domain name in dispute is different, generic and is not likely to confuse the public, either through initial interest confusion or otherwise, that Complainant is the sponsor of Respondent’s site which offers sexually explicit videos and materials.
A search for hits on “nations banking” on the Google search engine developed 149 listings, primarily involving a Canadian bank; and a search for nations banking (not in quotation marks) produced more than 300,000 hits. Searches on Alta Vista produced similar results. This Panel was hard pressed to find many listings in either search that resolve to web pages discussing or sponsored by Complainant.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules, together with extant principles of law dealing with trademarks.
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; and
(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, through its registration and use, has established that it has rights in the NATIONSBANK mark. However, in light of the common use of the words “nations” and “banking,” this Panel fails to see how there is a likelihood of confusion between NATIONSBANK and <nationsbanking.com>. To show that there is a confusing similarity between the disputed domain name and the mark, Complainant has to show that the public would be confused between its mark and the addition of the suffix “ing.”
See Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (Finding that if Complainant is really making an initial interest confusion argument, it would have to be suggesting that the public would be expecting that its distinguished moniker and service mark TRUMP would be readily associated with <porntumps.com>). The domain name at issue does not suggest that the Complainant is the source, origin or sponsor of Respondent’s website.
Although Complainant has legal rights in its mark, Complainant does not hold the exclusive right to use every form of its mark NATIONSBANK. See Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that even with Complainant’s service mark registrations in hand, Complainant does not have the exclusive right to use every form of the word “trump”); see also B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001), (holding that Complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS.)
What would Complainant have the Panel do with hypothetical registrations of <nationalbanking>, or <nationalistbank>? As of the date of this decision, both domains were available. Another slight variation of Complainant’s mark, when embodied in a domain name, is <nationalbank>. As it turns out, that variation is already being used by another bank to hyperlink web surfers to www.hometown-nationalbank.com/. Would these variations on the NATIONSBANK theme be protectable on this slippery slope as being deceptively similar to Complainant’s registered trademark? Owing to the highly descriptive nature of the NATIONSBANK mark and its two word components to begin with, this Panel, for UDRP purposes, is not inclined to and will not extend protection of that mark further into variations thereof, such as <nationsbanking.com>. Said simply, the domain name at issue is not identical to or confusingly similar to Complainant’s registered trademark.
This Panel finds that Policy ¶ 4(a)(i) has not been satisfied, and it is thus not necessary to determine whether the Respondent had rights or legitimate interests in the domain name at issue or whether it was registered and is being used in bad faith.
The Complainant has not established all three elements required under the ICANN Policy; accordingly, the Panel directs that the requested relief be, and hereby is, denied.
Accordingly, it is Ordered that the domain name <nationsbanking.com> not be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 18, 2002
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