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Generic Top Level Domain Name (gTLD) Decisions |
Bank of America Corporation v. Anthony
Stojic
Claim Number: FA0310000201975
PARTIES
Complainant
is Bank of America Corporation,
Charlotte, NC (“Complainant”) represented by Larry C. Jones of Alston & Bird, LLP, Bank of America Plaza, 101 S. Tryon Street,
Suite 4000, Charlotte, NC 28280-4000. Respondent is Anthony Stojic, 43-11 69th Street, Woodside, NY 11377
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain names at issue are <bankamericana.com>, <bankamericana.net>
and <bankamericana.org> registered with Wild West Domains, Inc.
PANEL
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
Panelist in this proceeding.
Judge
Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 9, 2003; the Forum received
a hard copy of the
Complaint on October 14, 2003.
On
October 9, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that
the domain names <bankamericana.com>, <bankamericana.net>
and <bankamericana.org> are registered with Wild West Domains,
Inc. and that Respondent is the current registrant of the name. Wild West
Domains, Inc. has
verified that Respondent is bound by the Wild West Domains,
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
October 14, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 3, 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@bankamericana.com, postmaster@bankamericana.net
and postmaster@bankamericana.org by e-mail.
A
timely Response was received and determined to be complete on October 31, 2003.
On
November 5, 2003, Complainant submitted a timely and complete Additional
Submission.
Respondent
submitted an Additional Submission on November 5, 2003 that was both timely and
complete.
On
November 6, 2003 Respondent submitted an amended version of its initial
Additional Submission.
On November 11, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant
Bank of America Corporation is a corporation duly organized and existing under
the laws of the State of Delaware, having
a principal place of business in
Charlotte, North Carolina. A
predecessor of Complainant was BankAmerica Corporation (“BankAmerica”). Via a series of mergers in September 1998,
BankAmerica merged with the successor of NationsBank Corporation, with the
resulting merged
entity (i.e.,
Complainant) later being named BankAmerica Corporation. On April 28, 1999, Complainant’s corporate
name was changed to Bank of America Corporation.
2. Bank
of America is the largest consumer bank in the United States and one of the
world’s best-known financial institutions.
3. Bank
of America owns valid statutory rights in its BANKAMERICA and BANK OF AMERICA
marks in the United States by virtue of its registration
of these marks with
the United States Patent and Trademark Office (U.S. Service Mark. Reg. Nos.
965,288 and 853,860).
4. The
disputed domain names are confusingly similar to Complainant’s BANKAMERICA and
BANK OF AMERICA marks. They are
identical to Complainant’s BANKAMERICA mark except that they include the term
“NA.” The term “NA” is commonly used in
this country in the banking industry as a component of federally regulated
banks’ names inasmuch
as it is an abbreviation for “National Association.”
5. Respondent
is not a bank, investment firm or other financial institution, and Respondent
has no pre-existing rights in “BankAmerica”
or “BankAmericaNA” as a trademark,
service mark or trade name. Hence, it may be presumed that Respondent has no
rights or legitimate
interest in <BankAmericaNA.com>,
<BankAmericaNA.net> or <BankAmericaNA.org> as domain names.
6. The
disputed domain names are being “used” inasmuch as an active website is
accessible via the domain names. Respondent
did not register or begin using the subject domain names until no earlier than
June 28, 2003 – long after Complainant’s
BANKAMERICA and BANK OF AMERICA marks
acquired their fame. Without any
pre-existing rights in the “BankAmerica,” or “BankAmericaNA” trademark, service
mark or trade name, it may be assumed
that Respondent adopted, registered and
has used the subject domain names because of the fame and goodwill associated
with Complainant’s
BANKAMERICA and BANK OF AMERICA marks.
B.
Respondent
1. Respondent
denies that the purchased <bankamericana.com>, <bankamericana.net>
and<bankamericana.org> domain names
are a combination of Complainant’s
mark and the abbreviation for “National Association.” Respondent asserts that the disputed domain names are not
confusingly similar to Complainant’s BANKAMERICA mark because the domain
names
combine the terms “bank” and “americanana.”
This combination of terms relates to items of Americana related to
banks, such as rare banknotes, coins and collectibles, and is the
intended use
of the disputed domain names. Moreover,
the disputed domain names are composed of two generic and widely-used terms.
2. Respondent
purchased the <bankamericana.com>, <bankamericana.net> and
<bankamericana.org> domain name registrations,
together with sixty-five
other domain name registrations not related to this dispute, at an auction on
e-Bay. Respondent offered the disputed
domain name registrations for sale in an attempt to recoup its purchase of the
sixty-eight total domain
name registrations for $817.
3. Respondent
has not acted in bad faith. Indeed, it
is Complainant who is abusing the UDRP process and is engaging in reverse
domain name hijacking. Complainant is
using the Policy in bad faith in an attempt to deprive a registered domain name
holder of the domain names.
C. Complainant’s Additional Submissions
1. Respondent
contends that the disputed domain names are not confusingly similar to
Complainant’s BANKAMERICA mark, despite the fact
that each of the domain names
comprises and begins with the BANKAMERICA mark in its entirety combined with
the suffix “NA.” As detailed in the
Complaint, the term “NA” is commonly used in the banking industry as an
abbreviation of “National Association.”
As such, the term “NA” is equivalent to other generic corporate
designations such as “Corp.” or “Inc.”
Accordingly, the addition of a generic term to a complainant’s mark does
not sufficiently distinguish a domain name from a complainant’s
mark for
purposes of confusing similarity under the UDRP.
2. Respondent
admits that he is not a bank, investment firm or other financial
institution. Respondent does not allege
that he is commonly known as BANK AMERICANA or BANK AMERICA NA or that he has
any plans to operate a business
under either of these names. As such, Respondent has not provided any
credible evidence that he has legitimate interests in the disputed domain
names.
3. Respondent
admits that he purchased the disputed domain names as part of an eBay auction
of sixty-five domain names for a purchase
amount of $817. As such, the pro rata portion of this cost
attributable to the disputed domain names would be approximately $12.57. In the Response, Respondent indicates that
he would have sold the domain names to Complainant for “$150 to $200.” Obviously, this amount far exceeds the
amount of Respondent’s actual costs.
Registration of a domain name for the primary purpose of selling the
domain name for an amount that exceeds Respondent’s costs is
evidence of bad
faith under the Uniform Policy for Domain Name Dispute Resolution Section4(b)(i).
4. Respondent
admits to purchasing the multiple domain names that are comprised of the marks
or personal names of third parties, without
having any legitimate interests in
those domain names. Respondent’s acquisition of numerous domain names that are
confusingly similar
to famous trademarks and personal names is further evidence
of bad faith use and registration pursuant to Section 4(b)(i) of the
UDRP.
D. Respondent’s Additional Submissions
1. Complainant
is claiming rights to generic words in the English language that are neither
original nor distinctive. They are
merely geographically descriptive.
Respondent has shown that “Americana” is a word unto itself and is being
used in a distinct manner.
2. Respondent
is not a domain name speculator. He is seeking ways to dispose of the
sixty-eight name lot. One of the names,
<bankappraisals.com>, is important to Respondent, as he has completed an
appraisers course.
3. The
valuing of out-of-pockets expenses is complex.
Respondent does not believe he can sell more than three or four names
from the sixty-eight name lot to recoup his purchase price. If 817 is divided by 4, it results in
204.25. Accordingly, Respondent
believes that the asking price of $150 to $200 is fair. It is not an exorbitant sum and, most of
all, Respondent did not approach Complainant to sell the names. Respondent redirected the names in bulk to a
simple for-sale page and later did not put much effort in selling the names
because of
the expense involved.
Ultimately, Respondent may choose not to sell.
FINDINGS AND DETERMINATIONS
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.
Preliminarily,
there is a procedural issue to be determined.
Respondent
submitted an Additional Submission on November 5, 2003, that was both timely
and complete. On November 6, 2003,
Respondent submitted an amended version of its initial Additional Submission
which was not timely. While the Forum
does not consider the amended Additional Submission to be in compliance with Supp.
Rule 7, nevertheless, it will be
considered on the merits by the Panelist.
A.P. Giannini must be spinning in his
grave if he is observing the continued litigation over the name of his beloved
Bank of America. A.P. founded the Bank
of Italy in 1904 in San Francisco to serve the working classes. In 1928, he bought the Bank of America and
consolidated vast bank properties under that name. The Bank of America became the largest bank in the country in
1945.
This minuscule history is of common
knowledge and it is pertinent here because the original Bank of America is one
of Complainant’s
predecessors.
Thus, for half a century or more, the
name, trade names and service marks (both registered and/or common law) of the
Bank of America
have been well-known to all.
Indeed, the Panelist’s research indicates
that there have been forty-two domain name dispute proceedings before the
National Arbitration
Forum, involving ingenious variations of the name “Bank of
America.” In each case the disputed
domain name was transferred.
In only one instance (Bank of America
Corporation v. Peter Klika (6/9/2003) (No. 16148) did the Panelist
decline to transfer the domain name <banqueamerique.com>. He, however, did order the transfer of the
domain name <bancamerica.com>.
It appears also that the decision to
transfer in Bank
of America Corporation v. Ling Shun Shing (11/25/2002) No. 132447, is
directly on point here since that decision, inter
alia, involved the disputed domain name <bankofamericana.com> closely
to the name here involved.
Respondent, however, is justified when he
belittles Complainant’s questionable tactic in using upper case letters for the
“na” ending
of “americana,” and asserting that “na” is a reference to a banking
national association.
Respondent also is correct when he
asserts that “Americana” is a term defined in the dictionary as “1: materials
concerning or characteristic
of America, its civilization, or its culture, broadly: things typical of America 2:
American culture.” (See Webster’s Ninth
New Collegiate Dictionary (1984) 78.)
[Emphasis in original.]
Thus, if the disputed domain name were
simply “americana,” there would be no problem between it and the name “Bank of
America” and
with the multitude of variations to that name which have been
attempted.
The disputed domain names here in each
instance, however, added the term “bank,” and this is the ingredient that makes
the disputed
domain names confusingly similar to Complainant’s marks.
Respondent argues that the disputed
domain names are constituted of two generic terms, and, despite Complainant’s
federal registrations,
the disputed domain names are merely descriptive.
His difficulty, however, is that it has
been established that the validity of a composite mark must be determined by
looking at the
mark as a whole and not at its constituent parts. (See 2 McCarthy, Trademarks and Unlawful Competition
(6/2001 Update) section 14.11.)
The name “Bank of America” is distinctive
and well-known, and has been so for many years.
In accordance with forty-two prior Decisions, the Panelist
finds and determines that the disputed domain names are confusingly similar
to
Complainant’s marks.
The Panelist finds and determines that
Respondent is not a bank, investment firm, or other financial institution. Respondent has no pre-existing rights in
“BankAmerica” or “BankAmericana” as a trademark, service mark, or trade name. Accordingly, the Panelist finds and
determines that Respondent has failed to establish any rights to or legitimate
interests in the
disputed domain names with regard to Policy Paragraph
4(c)(ii). See Compagnie de Saint Gobain v. Co. Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name); see also Gallup Inc. v.
Amish Country Store, FA 96209 (Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark).
The Panelist accepts Respondent’s
assertion that he is honest and always has acted in good faith.
First, however, Respondent must realize
that although he did not originally register the disputed domain names, having
purchased them
on eBay, he steps into the shoes of the original registrant.
Secondly, there is a legal presumption of bad faith, not only when there is
actual knowledge of Complainant’s marks, but when Respondent
reasonably should
have been aware of Complainant’s famous and long-existing marks, as is obvious
here.
In Interstellar Starship Services, Ltd. v. Epix,
Inc. (CA 9th 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said:
“However, ISS became aware of the ‘EPIX’
trademark when it applied for its own registration of ‘EPIX.’ Adopting a designation with knowledge of its
trademark status permits a presumption of intention to deceive. See Brookfield,
174 F.3d at 1059 (citing Official Airline
Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong
evidence of a likelihood of confusion. Sleekcraft,
559 F.2d at 354.”
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankamericana.com>, <bankamericana.net>
and <bankamericana.org> domain names be TRANSFERRED from
Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: November 24, 2003
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