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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bank of Alabama v. Sumith Rodrigo & Co.

Case No. D2004-0912

1. The Parties

The Complainant is Bank of Alabama, Birmingham, Alabama, United States of America, represented by Bradley Arant Rose & White LLP, United States of America.

The Respondent is Sumith Rodrigo & Co., Herndon, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bankofalabama.net> (hereafter “the Domain Name”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2004. On November 3, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 3, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2004. The Respondent did not submit any Response by that time. Accordingly, the Center notified the Respondent’s default on November 30, 2004. On that same date, the Respondent submitted a brief, one-page email Response.

The Center appointed Paul E. Mason as the sole panelist in this matter on December 9, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant states in its Complaint that it has been regularly and continuously using the name BANK OF ALABAMA in commerce since 1975. In 1999, Complainant began offering banking services over the internet using the BANK OF ALABAMA service mark.

On or about September 24, 2004, the Respondent applied for and registered the Domain Name.

5. Parties’ Contentions

A. Complainant

Similarity of Domain Name to Complainant's service mark:

In its Complaint, the Complainant asserts common law rights to the BANK OF ALABAMA service mark. The Domain Name is the same as the service mark claimed by Complainant, except for the extension “.net”, which does not differentiate it in any significant manner.

No rights or legitimate interest in the mark by Respondent:

Complainant claims that it has not authorized or licensed the Respondent to use the name “Bank of Alabama”.

Bad faith registration and use of the Domain Name:

Complainant says that Respondent has used the Domain Name to build a website which contains a combination of pornographic links and complaints about the Complainant Bank.

B. Respondent

Although Respondent did not reply in time to avoid a possible default, it is for the Panel to decide whether or not to accept a late Response. The Panel in this case is willing to consider the late Response.

In its brief email Response, the Respondent countered that:

Similarity of Domain Name to Complainant's service mark:

a) Complainant has not “trademarked” the name BANK OF ALABAMA;

b) Complainant has not “servicemarked” the name BANK OF ALABAMA;

c) “The BANK OF ALABAMA is a 'generic' term to which Rodrigo & Co. claim ownership”

No rights or legitimate interest in the mark by Respondent:

Respondent did not address this issue.

Bad faith registration and use of the Domain Name:

Respondent contends that only when he registered the Domain Name did Complainant move to 'claim protection for the domain'.

6. Discussion and Findings

A. Identical or Confusingly Similar

First, there is no question that the mere addition of an extension such as “.net” does nothing to alter the basic similarity of the Domain Name to the alleged service mark.

Second, to the question of legal ownership of the BANK OF ALABAMA name as a service mark:

By “not trademarked” and “not servicemarked”, the Panel assumes that Respondent means that Complainant has not registered the BANK OF ALABAMA name with the United States Patent and Trademark Office (U.S. PTO) as either a service or trademark, and/or that Complainant has not affixed the typical “TM” or “SM” superscripts following the BANK OF ALABAMA name. However, registration is not necessary in the U.S. in order to acquire rights in a mark. Federal and state common law rights can be derived from regular and reasonably continuous use of the name in commerce. Paragraphs 11-13 of the Complaint illustrate such use of the name by the Complainant. The Panel finds that, given the continuous use of the BANK OF ALABAMA name by Complainant, and its well-known reputation within its region and industry, it has common-law trademark rights to that name.

Respondent's other defense is that the name BANK OF ALABAMA is generic and therefore cannot belong to Complainant as a service mark. It is for the U.S. PTO or court to decide and not this Panel, but even if it were to be true, Respondent's email response tries to then claim the same so-called “generic” name for himself. There are several WIPO cases supporting the rights of domain name claimants to marks which contain geographic indicators in the U.S., see Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117, ruling for Complainant Gannett on the names “Arizona Republic”, “Burlington Free Press”, “Cincinnati Enquirer”, etc.

Earlier cases from other countries have varying results, but most conclude that it is not within the purview of a UDRP Administrative Panel to conclusively rule on whether a claimed mark should be disallowed in a UDRP proceeding because of supposed genericness, see Comexpo Paris v. Visiotex, S.A., WIPO Case No. D2000-0792.

B. Rights or Legitimate Interests

There is no argument that Complainant did not authorize or license the Respondent to use the BANK OF ALABAMA name. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

In Annex D to its Complaint, Complainant illustrates its allegation that the Respondent website built on the Domain Name contains a combination of links to pornographic sites and complaints about Complainant. This annex is a screen shot of the “www.bankofalabama.net” website taken on October 6, 2004.

The so-called “Public Notice” portion of the website posted at that time admits that pornographic links are there and tries to justify these by saying they are lawful products. At the bottom of this portion, which also contains a complaint about business practices that may somehow be related to Complainant but which Complaint says are defamatory, the Respondent posts this message: “HOW TO RESOLVE THIS ISSUE: [name omitted], you have my email address. Send me a note, we'll go from there.”

Although one component of the “Public Notice” section of this website has a gripe about Complainant, the pornography links are prominent and the final message smacks of some kind of “pornmail” practice, ie using the threat of keeping a pornographic-linked site open which is confusingly similar to Complainant's, in order to leverage settlement of a business dispute with Complainant.

The Panel did visit this website on December 10, 2004 and found it substantially changed, quite possibly to avoid the adverse inferences that could be made from the October version, which in addition to what was noted above, had no disclaimer that it was not related to the official Bank site. The new version, dated November 15, 2004, does contain such a disclaimer, including a link to the official Bank site. The home page of the new version has removed most of the pornographic links, although there is still a reference to a pornographic element at the very top of the screen. Respondent also restates its claim of right to the BANK OF ALABAMA mark.

This late change by Respondent, however, does not mask the fact that the Domain Name was, and probably still is registered and is being used to a large extent to link to pornographic websites. the element of bad faith is proven.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bankofalabama.net> be transferred to the Complainant.

Paul E. Mason
Sole Panelist

Date: December 16, 2004