Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bank of America Corporation, Charlotte, NC, USA ("Complainant") represented by Larry C. Jones, of Alston & Bird, LLP. The Respondent is Nation Bank NV, Schouwburgweg, II ("Respondent") represented by Luis F. Elias.

The domain name at issue is "nationbanknv.com", registered with Network Solutions, Inc.

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

Judge Ralph Yachnin, as Panelist.

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

On March 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "nationbanknv.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 March 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 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@nationbanknv.com by e-mail.

A timely response was received and determined to be complete on March 23, 2001.

On April 5, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

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

A. Complainant

The Complainant, the largest consumer bank in the United States, is the successor to NationsBank Corporation. Both have used the service mark/trade mark NATIONSBANK and a particular distinctive logo (the "NationsBank Logo") to identify their services. In August, 1990, NationsBank began using the trade name and service mark NATIONSBANK. Complainant also owns the domain name NationsBank.com, and has used it for several years. Further, Complainant and its predecessor, NationsBank often depicted those marks in blue and red, and a version of the mark NationsBank in those colors has been used and was the subject of a U.S. Service Mark Registration in 1990, in addition to the subject of a Venezuela Service Mark Registration in 1999. The marks have often been depicted by Complainant and its predecessors in a particular font, with the first letter of each term capitalized, and all other letters being in lower case. Hence because of the distinctive logo the public has come to recognize the Complainant’s and its predecessor’s business. Thus Complainant has acquired rights to the exclusive use of the marks in the United States, Venezuela and elsewhere.

Respondent is using the domain name nationbanknv.com, which it acquired in November 2000 to direct Internet users to a website that is advertising competitive financial services and depicts the designation "NationBank" in a manner that imitates the NationsBank Logo.

B. Respondent

NationsBank is Complainant’s predecessor. As a result of a business acquisition, Complainant became the owner of NationsBank’s registered marks and continues to use the family of NATIONS marks in connection with its banking services in The United States, Venezuela, and elsewhere. Respondent has, acquired the domain name nationbanknv.com by registering it with Network Solutions and has been using it to direct Internet users to a website where Respondent depicts the designation NationBank in a manner, which imitates the NationsBank Logo. While Respondent has not accepted the grounds alleged by Complainant, it has not denied them, and proposes cancellation of the domain name, but not transfer to the Complainant, as a complete remedy. However, cancellation of the domain name would allow the Respondent, or anyone else, to re-register the domain name when it subsequently becomes available, thereby putting the Complainant in the same position it is in at present.

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 contends that the domain name in question is confusingly similar to Complainant’s registered NATIONSBANK trademark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR) (finding that "kelsonmd.com" is identical or confusingly similar to Complainant’s federally registered service mark, "Kelson"); Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark).

Complainant contends that Respondent has no rights or legitimate interests in the domain name because at the time of registering the domain name, Respondent had no preexisting rights in the NationBankNV mark. Being commonly known by the domain name is one method of establishing rights and legitimate interests in the domain name. Policy ¶ 4(c)(ii). See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

UDRP Panels have also held that redirecting Internet users via a confusingly similar domain name to a competing website is not a bona fide or legitimate use under Policy ¶ 4(c)(i). See North Coast Medical, Inc. v Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

Respondent appears to be using the domain name for commercial purposes; thus, Respondent cannot claim rights or legitimate interests under Policy ¶ 4(c)(iii), which finds rights and legitimate interests in the domain name if Respondent is using the domain name in connection with a "legitimate noncommercial or fair use."

Further, UDRP Panels have held that a Respondent’s willingness to relinquish the domain name indicates no rights or legitimate interests in the domain name. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001)

Complainant contends that Respondent registered and used the domain name in bad faith because Respondent is linking the domain name to a website offering competitive financial services. Respondent further confuses Internet users by using a logo on the website that imitates Complainant’s NationsBank logo. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

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