Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bank of America Corporation, Charlotte, SC, USA ("Complainant") represented by Larry C. Jones, of Alston & Bird LLP. The Respondent is Premium Domains For Sale, Montreal, PQ, CANADA ("Respondent").

The domain name at issue is "investmentbankamerica.com", registered with Tucows.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 1, 2001; the Forum received a hard copy of the Complaint on February 5, 2001.

On February 2, 2001, Tucows confirmed by e-mail to the Forum that the domain name "investmentbankamerica.com" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 February 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@investmentbankamerica.com by e-mail.

A timely response was received and determined to be complete on March 5, 2001.

On March 8, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant contends that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the domain name, and that the domain name has been registered and is being used in bad faith. The Complainant contends that the Respondent is using the domain name to direct Internet users to a commercial website and that the Respondent is offering the domain name for sale to the public.

B. Respondent

The Respondent contends the domain name at issue is not confusingly similar to Complainant's mark, further stating that there is a very significant difference between the domain name at issue and the Complainant's mark. The Respondent contends that the domain name was acquired along with others as generic domain names to be offered to the financial community at large, and that it has the right to market generic domain names. The Respondent also contends that the domain name was not registered in bad faith as the names offered for sale on its website are generic in nature.

The Complainant is a Delaware corporation, having a principal place of business in Charlotte, North Carolina. Via a series of mergers in September 1998 Bank America merged with the successor of NationsBank Corporation, with the resulting merged entity later being renamed BankAmerica Corporation. On April 28, 1999, the Complainant's corporate name was changed to Bank of America Corporation.

Complainant is a well known financial institution, along with its predecessors. Prior to the 1998 mergers, Complainant provided a wide range of banking and financial services, including investment services, in various parts of this and other countries, including Canada.

Complainant obtained early registrations of the BankAmerica mark, said registrations being issues July 31, 1973. Complainant also owns the domain name BankAmerica.com, which is used to direct internet users to Complainant’s website at BankofAmerica.com. The Complainant uses this website to market and promote the various financial services offered, including online investment services.

The Respondent markets domain names for sale.

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.

By its continuous use of its mark, Complainant owns valid and enforceable common law rights in said mark in the United States by its continuous use of such mark. Also, Complainant has established valid statutory rights in the mark by its longstanding use and registration of said mark in the United states and Canada.

The domain name at issue consists of a generic term associated with financial services combined with Complaint’s mark. The addition of this generic term coupled with the .com does not sufficiently set it apart from Complainant’s mark; in fact it enhances the probability of confusion in the marketplace as the Complaint is a provider of investment services. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

The Respondent is not engaged in the business of providing banking, investment or other financial services. Further, the Respondent has no preexisting rights in the domain name as a trademark, service mark or trade name. Respondent is merely advertising the domain name for sale and to promote the sale of other domain names purchased by Respondent, and has not used the domain name in connection with a bona fide offering of goods or services. See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

The Respondent registered the domain name at issue some 27 years after Complainant had acquired its fame. It would appear that the Respondent registered the domain name because of the fame and goodwill associated with the Complainant’s established mark. The Respondent is engaged in the business of marketing domain names for sale, and has offered the domain name for sale for a sum exceeding the cost of registration. Also, the Respondent appears to have intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website. Further, the Respondent is making no legitimate use of the domain name. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name INVESTMENTBANKAMERICA.COM be transferred from the Respondent to the Complainant.