Bank of America Corporation v. Luz Yantis
Claim Number: FA0308000178818
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, North Carolina, USA (“Complainant”) represented by Larry C. Jones of Alston & Bird, LLP. Respondent is Luz Yantis, Oriental Mindoro, Phillipines (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <unitednationsbank.com>
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Linda
M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 4, 2003; the Forum received a hard copy of the
Complaint on August 6, 2003.
On
August 4, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <unitednationsbank.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, 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
August 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 28,
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@unitednationsbank.com by e-mail.
A
timely Response was received and determined to be complete on August 26, 2003.
Pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Linda M. Byrne as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent’s domain name <unitednationsbank.com> is
confusingly similar to its trademark NATIONSBANK; that Respondent does not have
any rights or legitimate interest with respect to the domain name <unitednationsbank.com>,
and that the domain name was registered and is being used by Respondent in bad
faith.
B. Respondent
Respondent
contends that Complainant is no longer using the term NATIONSBANK, that the
term NATIONSBANK is generic, and that <unitednationsbank.com> is
not confusingly similar to NATIONSBANK.
Respondent also contends that it has a legitimate interest in the domain
name, and that Respondent has not acted in bad faith. Respondent also charges Complainant with reverse domain name
hijacking.
FINDINGS
Complainant, Bank of America Corporation,
is the largest consumer bank in the United States. For several years prior to 1998, Complainant and one of its
predecessors, NationsBank Corporation, used the trademark NATIONSBANK in
association with banking and financial services. As a result of several mergers in September 1998, a successor of
NationsBank merged with Bank of America, with the resulting entity being named
Bank of America Corporation.
Complainant is the owner of several
registrations for the NATIONSBANK mark throughout the world, including U.S.
Registration No. 1, 976,832.
Complainant also owns the domain name <nationsbank.com>, which automatically
brings up Complainant’s website at
<bankofamerica.com>.
The domain name at issue, <unitednationsbank.com>,
directs Internet users to a search engine website titled “BuyDomains.com”. BuyDomains.com is an entity that is not
operated or controlled by Respondent.
The BuyDomains website that is associated with <unitednationsbank.com>
includes links to the websites of various third party companies.
The website also contains the statement
“This Domain is for Sale,” although the website sets forth no sale price. The website has the heading “Try These
Related Links,” with the links including “Banks,” “Bank of america visa,” and
“Bank of america mortgage.” According
to Respondent, BuyDomains.com assigns various links to each of its domain
names, and Respondent is not responsible for the links that appear on the
website corresponding to <unitednationsbank.com>.
Respondent does not identify the nature
of its business in its response. In any
event, Respondent does not do business under the name “Nations Bank.” The Respondent states, “The registration of
UnitedNationsBank.com was speculative that there someday may be a United
Nations Bank or at the least the name would be a novelty and collectors item.” The Respondent admits that he registered the
domain name because he was “trying to sell the [domain] name for a
profit.” Respondent stated that it had
never heard of Complainant or the NATIONSBANK trademark before receiving notice
of this domain name dispute. Respondent
has not contacted Complainant about selling the domain name to Complainant, nor
has Respondent contacted any other party to attempt to sell the domain
name.
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.
Complainant and its predecessor owned
legal rights to the NATIONSBANK trademark in the past. However, the Complainant has not established
any current, legally valid trademark rights in the NATIONSBANK trademark. It is true that Complainant owns two U.S.
trademark registrations for NATIONSBANK.
A U.S. trademark registration of
a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Janus Int’l Holding Co. v. Rademacher. D2002-0201 (WIPO
Mar. 5, 2002); Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002). However, Respondent
has rebutted this presumption by arguing that the term “Nations Bank” is
generic, and by noting that Complainant no longer uses the NATIONSBANK
trademark. The Complainant has
submitted no evidence that it has used the NATIONSBANK mark since September of
1998, other than in a non-prominent manner in the domain name
<nationsbank.com>. In that the
evidence indicates that Complainant has not used the NATIONSBANK trademark for
five years, Complainant does not appear to have any valid legal rights in this
term.
Even assuming that Complainant has valid
rights in the NATIONSBANK trademark, <unitednationsbank.com> is
not identical or confusingly similar to the term NATIONSBANK. The difference between <unitednationsbank.com>
and the term NATIONSBANK is the first word “United.” The word “United” is not an ordinary, descriptive word. Complainant has not alleged any instances of
actual confusion, and the <unitednationsbank.com> domain name is
not likely to confuse the pubic into believing that Complainant is affiliated
with Respondent’s domain name or site. See
Bank of America Corporation v. Fluxxx, Inc. FA 0201000103809 (Nat. Arb.
Forum February 18, 2002).
The Panel concludes that the Respondent
has not presented sufficient evidence that it owns rights or a legitimate
interest in the domain name <unitednationsbank.com> prior to
Respondent’s notification of the dispute between the parties. Respondent is not using the domain name in
connection with a bona fide offering of goods or services. Respondent is not commonly known as “United
Nations Bank.” Nor has Respondent
submitted evidence that it is making preparations to use
<unitednationsbank.com>.
Respondent evidently registered <unitednationsbank.com>,
along with other domain names, in the hope that a buyer would come along to
purchase the domain name, i.e., with the hope that Respondent would see some
commercial gain.
Respondent’s use of the <unitednationsbank.com>
domain name to redirect Internet traffic to the website at the
<buydomains.com> domain name does not represent a bona fide offering of
goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy 4 (c) (iii).
See Prudential Ins. Co. of America v. Stonybrook Invs., Ltd., FA
100182 (Nat. Arb. Forum Nov. 15, 2001)(finding no rights or legitimate
interests in the disputed domain name where Respondent was using Complainant’s
mark to redirect Internet users to a website offering credit card services
unrelated to those services offered under Complainant’s mark); see also U.S.
Franchise Sys. Ins. v. Thurston Howell III, FA 152457 (Nat. Arb. Forum May
6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering of goods or services).
The Panel concludes that Respondent does
not have any rights or legitimate interests as defined by the Uniform Domain Name Dispute
Resolution Policy.
In view of the fact that this Panel finds
that Policy 4(a)(i) has not been satisfied, it is not necessary to determine
whether Respondent registered and used <unitednationsbank.com> in
bad faith.
As a final matter, the Panel concludes
that Complainant has not engaged in reverse domain name hijacking. Complainant submitted evidence to support
its complaint, has not misstated the law, and has not acted in bad faith in
initiating this proceeding.
DECISION
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 <unitednationsbank.com>
domain name not be transferred from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: September 23, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page