Bank of America Corporation v. Zhi Chao Yang
Claim Number: FA2007001904533
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrildge.com>, <merriledfe.com>, <merrilege.com>, <merriliedge.com>, <merrilladge.com>, <merrilleadge.com>, <merrilledage.com>, <merrilledga.com>, <merrilledgae.com>, <merrilleege.com>, <merrillerge.com>, and <merrilliedge.com>, registered with Cloud Yuqu LLC; Chengdu West Dimension Digital Technology Co., Ltd. and West263 International Limited.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint in English to the Forum electronically on July 16, 2020; the Forum received payment on July 16, 2020.
On July 20, 2020, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <merrildge.com>, <merriledfe.com>, <merrilladge.com>, <merrilledage.com> and <merrillerge.com> domain names are registered with Cloud Yuqu LLC and that Respondent is the current registrant of the names.
On July 20, 2020, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <merriliedge.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name.
On July 20, 2020, West263 International Limited confirmed by e-mail to the Forum that the <merrilege.com>, <merrilleadge.com>, <merrilledga.com>, <merrilledgae.com>, <merrilleege.com>, <merrilliedge.com> domain names are registered with West263 International Limited and that Respondent is the current registrant of the names.
Cloud Yuqu LLC, Chengdu West Dimension Digital Technology Co., Ltd. and West263 International Limited have verified that Respondent is bound by their registration agreements, which are in Chinese, and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Chinese, setting a deadline of August 12, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@merrildge.com, postmaster@merriledfe.com, postmaster@merrilege.com, postmaster@merriliedge.com, postmaster@merrilladge.com, postmaster@merrilleadge.com, postmaster@merrilledage.com, postmaster@merrilledga.com, postmaster@merrilledgae.com, postmaster@merrilleege.com, postmaster@merrillerge.com, postmaster@merrilliedge.com. Also on July 23, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default in both English and Chinese.
On August 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
As noted, the Registration Agreements are in Chinese. Pursuant to Rule 11(a), the language of the proceeding shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Citing Morgan Stanley v. Registrant of domain, NAF Claim No. FA1803001776246; Links (London) Ltd. d/b/a Links of London v. “Barack Hussein Obama Jr” et al., WIPO Case No. D2011-0878; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 and Bank of America Corporation v. guzhi ming / gu zhi ming, NAF Claim No. FA1905001842059, Complainant submits that the language of this proceeding should be English because the domain names are in English; Respondent has used the services and servers of a domain name parking service which provides its services only in English; and the domain names resolve to websites displaying advertising links in English.
In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be conversant with English and that it would be unnecessarily time-consuming and costly to require Complainant to translate the Complaint into Chinese. Accordingly, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Complaint and Commencement Notification, and determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant maintains a worldwide investment banking and financial services firm. Complainant has rights in the MERRILL, MERRILL LYNCH, MERRILL EDGE, and other MERRILL related marks through its registration of the marks worldwide. The disputed domain names are confusingly similar to Complainant’s MERRILL and MERRILL EDGE marks.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any of the disputed domain names, and Complainant has not authorized or licensed Respondent to use its marks in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent profits from pay-per-click fees by using the domain names to redirect Internet users seeking Complainant’s services to websites with unrelated and competing hyperlinks.
Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith registrations, as evidenced by it’s registering multiple domain names and a previous case in which Respondent has been found to have engaged in typosquatting in bad faith Sodexo v. 杨智超 (Zhi Chao Yang), WIPO Case No. D2020-1171. Respondent disrupts Complainant’s business for commercial gain by confusing Internet users into mistakenly visiting the websites to which the disputed domain names resolve instead of Complainant’s website, and using this confusion to profit from pay-per-click revenue from the hyperlinks on those websites. Respondent’s domain names also typosquat by slightly misspelling Complainant’s MERRILL and/or MERRILL EDGE marks in each disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
In 2009, Complainant acquired Merrill Lynch & Co. Inc. and, by assignment, that company’s trademarks, which are now registered in Complainant’s name. Complainant has rights in the MERRILL LYNCH, MERRILL and MERRILL EDGE marks through their registration in Complainant’s name: MERRILL LYNCH, USPTO Reg. 5837719, registered August 20, 2019 with claimed first use in commerce in 1979; MERRILL, USPTO Reg. 6,054,190, registered May 12, 2020 with claimed first use in commerce in 2004; and MERRILL EDGE, USPTO Reg. 4,080,884, registered Jan. 3, 2012 with claimed first use in commerce in 2010.
Complainant is also the registrant of the domain names <merrilllynch.com>, <merrill.com> and <merrilledge.com>. Since 2010, Complainant has operated a popular online brokerage service, known as MERRILL EDGE, through the website at “www.merrilledge.com”.
The Panel finds that each of the disputed domain names <merrildge.com>, <merriledfe.com>, <merrilege.com>, <merriliedge.com>, <merrilladge.com>, <merrilleadge.com>, <merrilledage.com>, <merrilledga.com>, <merrilledgae.com>, <merrilleege.com>, <merrillerge.com> and <merrilliedge.com> is confusingly similar to Complainant’s MERRILL and MERRILL EDGE marks, since each comprises a mis-spelling of one or both of those words, together with the inconsequential gTLD “.com”, which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
Complainant’s marks are distinctive and extremely well-known. All of the disputed domain names were registered on May 12, 2020. They each comprise a typosquatted version of Complainant’s MERRILL EDGE MARK and they all resolve to websites displaying one or more of Complainant’s MERRILL LYNCH, MERRILL and MERRILL EDGE marks and pay-per-click hyperlinks to websites unrelated to Complainant and its services.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element
In light of the circumstances set out in relation to the previous element, the Panel finds that Respondent was well aware of Complainant’s MERRILL LYNCH, MERRILL and MERRILL EDGE marks when registering the domain names and did so with intent for commercial gain to misleadingly divert Complainant’s customers.
Further, typosquatting is independent evidence of bad faith registration and use of a domain name per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015).
The Panel finds that Respondent registered and is using the domain names in bad faith.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrildge.com>, <merriledfe.com>, <merrilege.com>, <merriliedge.com>, <merrilladge.com>, <merrilleadge.com>, <merrilledage.com>, <merrilledga.com>, <merrilledgae.com>, <merrilleege.com>, <merrillerge.com>, and <merrilliedge.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 24, 2020
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