Generic Top Level Domain Name (gTLD) Decisions

Complainant is Bank of America Corporation, Charlotte, NC, USA ("Complainant") represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is RMG - BUY or LEASE this domain by E-MAIL Hostmaster The Bolshoy Golovin, Moscow, Russia ("Respondent").

The domain name at issue is <nationsbancmontgomery.com> registered with GKG.Net, Inc..

On May 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 30, 2001; the Forum received a hard copy of the Complaint on May 4, 2001.

On May 3, 2001, GKG.Net, Inc. confirmed by e-mail to the Forum that the domain name <nationsbancmontgomery.com> is registered with GKG.Net, Inc. and that Respondent is the current registrant of the name. GKG.Net, Inc. has verified that Respondent is bound by the GKG.Net, 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 May 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 24, 2001 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@nationsbancmontgomery.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.

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.

A. Complainant

The <nationsbancmontgomery.com> domain name is confusingly similar to Complainant’s NATIONSBANC MONTGOMERY SERVICES mark, in which Complainant has common law rights.

Respondent has no rights or legitimate interests in the <nationsbancmontgomery.com> domain name.

Respondent registered and used the <nationsbancmontgomery.com> domain name in bad faith.

B. Respondent

No response was received from Respondent.

Bank of America is the largest consumer bank in the United States and one of the nations best-known financial institutions. Complainant registered the NATIONSBANC service mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,834,877 on May 3, 1994. Furthermore, Complainant registered its MONTGOMERY SECURITIES 500 GROWTH STOCK INDEX mark on the Principal Register as Registration No. 2,258, 456 on July 6, 1999. Complainant has used its marks in connection with its banking and financial reports and services, since their registrations.

As the result of a series of mergers, Complainant has also used the above marks collectively as NationsBanc Montgomery Securities. On May 16, 1999 NationsBanc Montgomery Securities was changed to Banc of America Securities. The public still, however, associates the NationsBanc Montgomery Securities with the Complainant.

Respondent, an entity which has identified itself to the registrar as "RMG – BUY or LEASE this domain by E-MAIL," has provided the registrar, GKG.Net, Inc., with the following mailing address: "Hostmaster The, Bolshoy Golovin, Moscow, Moscow 911103, RU." Respondent registered the <nationsbancmontgomery.com> domain name on February 26, 2001. Respondent has linked the <nationsbancmontgomery.com> domain name to websites that offer pornographic material.

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.

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 has established it has common law rights in NATIONSBANC MONTGOMERY SERVICES, in connection with its banking and financial services, given its substantial use. Complainant has spent tens of millions of dollars annually promoting its marks, and the public continues to recognize the NATIONSBANC MONTGOMERY SERVICES mark with that of the Complainant. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (finding that "[O] n account of long and substantial use of the said name ["keppelbank.com"] in connection with its banking business, it has acquired rights under the common law); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc (Complainant owns a trademark for its full company name) had developed brand name recognition with the BIBBERO term by which the Complainant is commonly known). Furthermore, the ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).

The <nationsbancmontgomery.com> domain name is confusingly similar to the NATIONSBANC MONTGOMERY SERVICES common law mark, in which the Complainant has rights. The deletion of the word SERVICES from the domain name does not take the disputed domain name out of the realm of being confusingly similar when the majority of the mark remains intact. See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s "Wellness International Network").

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

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <nationsbancmontgomery.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Respondent is not engaged in a bona fide offering of goods or services. Respondent’s registration and use of the <nationsbancmontgomery.com> domain name, while linking it to a website which offers pornographic material, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <nationsbancmontgomery.com> domain name, pursuant to the Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

There is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <nationsbancmontgomery.com> domain name. It is not a legitimate or fair use to redirect users to pornographic websites and to profit from advertising revenue received from such links. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <nationsbancmontgomery.com> domain name and that Policy ¶ 4(a)(ii) has been satisfied.

Respondent is engaged in bad faith use of the <nationsbancmontgomery.com> domain name. The registration and use of the <nationsbancmontgomery.com> domain name is evidence of bad faith when Respondent attracts Internet users to its website for commercial gain by creating a likelihood of confusion and linking that website to other websites containing pornographic material. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the <geociities.com> domain name in dispute to websites displaying banner advertisements and pornographic material).

Bad faith is also demonstrated by the fact that Respondent’s contact information identifies Respondent as "RMG – BUY or LEASE this domain by E-MAIL." Bad faith can be inferred from this type of conduct as it identifies someone primarily interested in registering the disputed domain name for the sole purpose of selling or leasing the domain name rather than making any constructive use of it. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding "the fact that the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name"); see also Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name the Respondent chose for the registrant, "If you want this domain name, please contact me").

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <nationsbancmontgomery.com> domain name be transferred from Respondent to Complainant.