Generic Top Level Domain Name (gTLD) Decisions

Bank of America Corporation, North Carolina, USA
COMPLAINANT,

vs.

Saeid Yomtobian, Encino, California, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094889

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “BANKFORAMERICA.COM”, registered with Network Solutions, Inc. (“NSI”).

PANELIST(s)  John A. Bender as Panelist(s).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/23/2000; The Forum received a hard copy of the Complaint 05/23/2000. 

On 05/31/2000, NSI confirmed by e-mail to The Forum that the domain name “BANKFORAMERICA.COM” is registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 05/25/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/21/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On 06/21/2000, 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 June 22, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum John A. Bender as Panelist(s).

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is confusingly similar to its service mark registered for and in use by the Complainant.  Further, the Complainant contends that the Respondent is a domain name pirate, has no rights or legitimate interests to the domain name, and has registered and is using the domain name in bad faith.        

B. Respondent

The Respondent submitted no response in this matter.

FINDINGS

The Complainant owns the service marks BANKAMERICA (issued 07/31/1973; No. 965,288) and BANK OF AMERICA (issued 07/30/1968; No. 853,860) for banking and financial services.  The Complainant uses these marks to advertise its services.  The Complainant’s website (www.BankofAmerica.com) is also an important part of marketing its services.

The Respondent has registered hundreds of domain names, including the domain name in question.  Previously, the Respondent owned BANKSAMERICAN.COM and BANKAMERICANA.COM  which he used to direct Internet users to sexually explicit websites.  These domain names are no longer owned by the Respondent. 

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims 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.

The Complainant has offered numerous exhibits in support of its claims, whereas the Respondent has submitted no response in the matter.  The Respondent’s failure to dispute the allegations of the Complainant permits the inference that the use of the Complaint’s marks in connection with the Respondent’s website is confusingly similar to the Complainant’s mark.  Further, the Respondent’s failure to respond leads one to believe that the Respondent’s knows their web site is misleading and intentionally diverting business from the Complainant.  See Hewlett-Packard Company v. Full System, FA 94637, (Nat. Arb. Forum May 22, 2000).  Applying the Policy to the issue in this case furthers these inferences.

Identical and/or Confusingly Similar

The domain name in question is confusingly similar to the Complainant’s marks.  The terms “Bank” and “America” are the most significant and dominant terms of the marks.  The preposition that links the Complainant’s marks in the Respondent’s domain name is relatively insignificant. The association between the dominant terms of the Complainant’s mark is vital in maintaining a business in today’s e-commerce society.

Rights or Legitimate Interests

 The Respondent has not registered the name in connection with any bona fide offering of goods or services nor is commonly known by the domain name in question.  ICANN Policy ¶ 4(c)(i),(ii).  In fact, the Respondent’s domain name acts as a portal to a third parties’ site (www.publicadvertising.com).  Trying to divert Internet browsers by intentionally creating a likelihood of confusion is evidence of no legitimate interest and bad faith.  ICANN Policy ¶ 4(b)(iv), (c)(iii).

Bad Faith

The Respondent has registered hundreds of domain names that are variants of famous names and/or other’s marks (ex: michaljackson.com, toyotacar.com, missamerican.com, doctorruth.com, sternhoward.com, anazon.com).  Additionally, the Respondent has registered hundreds of domain names that are either profane, sexually explicit, or disturbing for other reasons (ex: sexbyanimals.com, childmolestation.com, pornoooo.com, hateblacks.com, iwanttokillyou.com).  The Respondent has not developed these sites.  Instead, he is making a profit from banner ads on the cite and linking it to other sites.  Registering numerous sites and failing to develop a product or service in connection with the site is evidence of bad faith.  See Nabisco Brands Co. v. The Patron Group, Inc. No. 2000-0032 (WIPO February 23, 2000); Ziegenfelder Co. v. VMH Enterprises, Inc., No. D 2000-0039 (WIPO March 14, 2000).

The Respondent previously acquiesced to the Complainant’s demand to cease using and withdraw the registrations of certain conflicting domain names.  The Respondent is attempting to disrupt business and prevent the Complainant from using its mark to the fullest extent. This is also evidence of bad faith.  ICANN Policy ¶ 4(b)(iii), (iv).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panelist that the requested relief be granted.  Accordingly, for all of the foregoing reasons, it is ordered that the domain name, “BANKFORAMERICA.COM” be transferred from the Respondent to the Complainant.

Dated:  June 27, 2000                         Honorable John A. Bender, Arbitrator