Bank of America Corporation v. Guo Wu
Claim Number: FA2204001992609
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Guo Wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrillmobile.com>, <cnmerrillmobile.com>, <merrill2000.com>, <merrillapp.com>, <merrillcn.com>, <merrillok.com>, <amerrillapp.com>, <merrillcj.com>, <emerrillcn.com>, <merrill1999.com>, and <merrill2008.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2022; the Forum received payment on April 16, 2022.
On April 18, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <merrillmobile.com>, <cnmerrillmobile.com>, <merrill2000.com>, <merrillapp.com>, <merrillcn.com>, <merrillok.com>, <amerrillapp.com>, <merrillcj.com>, <emerrillcn.com>, <merrill1999.com>, and <merrill2008.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement 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 April 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2022 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@merrillmobile.com, postmaster@cnmerrillmobile.com, postmaster@merrill2000.com, postmaster@merrillapp.com, postmaster@merrillcn.com, postmaster@merrillok.com, postmaster@amerrillapp.com, postmaster@merrillcj.com, postmaster@emerrillcn.com, postmaster@merrill1999.com, postmaster@merrill2008.com. Also on April 20, 2022, 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.
On May 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant, Bank of America Corporation, operates one of the largest financial institutions in the world. Complainant has rights in the MERRILL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,054,190, registered May 12, 2020).
2. Respondent’s <merrillmobile.com>, <cnmerrillmobile.com>, <merrill2000.com>, <merrillapp.com>, <merrillcn.com>, <merrillok.com>, <amerrillapp.com>, <merrillcj.com>, <emerrillcn.com>, <merrill1999.com>,[i] and <merrill2008.com> domain names (hereinafter collectively referred to as the “Merrill Domain Names”) are identical or confusingly similar to Complainant’s MERRILL mark, with each domain incorporating Complainant’s mark in its entirety and merely adding letters, numbers, geographic indicators, or generic words to the mark before adding a generic top-level domain (“gTLD”) to form each domain name.
3. Respondent lacks rights and legitimate interests in the Merrill Domain Names as it is not commonly known by any of the Merrill Domain Names and is neither an authorized user or licensee of the MERRILL mark.
4. Additionally, Respondent fails to use the Merrill Domain Names for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent has used some or all of the Merrill Domain Names to redirect Internet users to websites offering cryptocurrency investing and/or mobile application downloads, each of which demonstrates Respondent’s attempts to profit by promoting Complainant’s competitors.
5. Respondent registered and uses each of the Merrill Domain Names in bad faith. First, Respondent has used the Merrill Domain Names to direct users to websites offering competing cryptocurrency investing services and mobile application downloads which may demonstrate bad faith attraction to commercial gain.
6. Additionally, Respondent’s domain names create confusion and divert consumers from Complainant.
7. Respondent’s use of a privacy service may provide further evidence of bad faith.
8. Finally, Respondent registered the Merrill Domain Names with actual knowledge of Complainant’s rights in the MERRILL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MERRILL mark. Respondent’s domain names are confusingly similar to Complainant’s MERRILL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <merrillmobile.com>, <cnmerrillmobile.com>, <merrill2000.com>, <merrillapp.com>, <merrillcn.com>, <merrillok.com>, <amerrillapp.com>, <merrillcj.com>, <emerrillcn.com>, <merrill1999.com> domain names and that Respondent registered and uses the domain names in bad faith.
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”).
Complainant asserts rights in the MERRILL mark through registration with the USPTO (e.g., Reg. No. 6,054,190, registered May 12, 2020). Registration of a mark with a national trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). As Complainant provides evidence of its registration with the USPTO, the Panel holds that Complainant has rights in the MERRILL mark under Policy ¶ 4(a)(i).
Complainant then argues that each of the Merrill Domain Names is identical or confusingly similar to Complainant’s mark as each domain incorporates the entire MERRILL mark, only differing by adding letters, numbers, geographic indicators, or generic terms, and finally adding the “.com” gTLD to each domain. Such changes have been deemed insufficient to distinguish a domain name from another’s mark under Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Thus, Respondent’s domain names are confusingly similar to Complainant’s MERRILL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Merrill Domain Names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the Merrill Domain Names as it is not commonly known by any of the Merrill Domain Names and is neither an authorized user or licensee of the MERRILL mark. When response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,”and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use another’s trademark can provide further evidence that a respondent is not commonly known by a domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information of record identifies “Guo Wu” as the registrant for each of the Merrill Domain Names, and nothing within the record indicates Complainant has authorized Respondent’s use of the MERRILL mark. The Panel holds that Respondent is not commonly known by the Merrill Domain Names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the Merrill Domain Names for any bona fide offer of goods or services or for any legitimate noncommercial or fair use, instead redirecting Internet users to websites offering cryptocurrency investing services or mobile application downloads. Providing links to services which compete directly against a trademark holder’s business does not constitute either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of the resolving websites for each of the Merrill Domain Names as evidence that the resolving websites contain links to services that compete with those offered by Complainant. Therefore, the Panel holds that Respondent lacks rights and legitimate interests in the Merrill Domain Names under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses each of the Merrill Domain Names in bad faith because Respondent attempts to offer competing investing services. Using an infringing domain name to offer competing services may demonstrate bad faith attraction to commercial gain under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Complainant provides screenshots of the Merrill Domain Names showing Respondent’s resolving websites which offer links to services that compete with Complainant.
Complainant contends that Respondent registered the Merrill Domain Names with actual knowledge of Complainant’s rights in the MERRILL mark. Registration of an infringing domain name while knowing of another’s trademark rights is sufficient to find bad faith under Policy ¶ 4(a)(iii) and may be established based on the notoriety of Complainant’s mark and Respondent’s use of the domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant has provided evidence of the famous and well-known nature of the. MERRILL mark and its secondary meaning. The record adequately supports Complainant’s assertion that Respondent had actual knowledge of the MERRILL mark when Respondent registered Merrill Domain Names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrillmobile.com>, <cnmerrillmobile.com>, <merrill2000.com>, <merrillapp.com>, <merrillcn.com>, <merrillok.com>, <amerrillapp.com>, <merrillcj.com>, <emerrillcn.com>, <merrill1999.com>, and <merrill2008.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 30, 2022
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