Bank of America Corporation and Merrill Lynch & Co., Inc. v. Webadviso
Claim Number: FA0903001254121
Complainant is Bank of America Corporation and Merrill
Lynch & Co., Inc. (“Complainant”),
represented by Melissa G. Ferrario, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bofaml.com>, <mlbofa.com>,<bofamerrill.com>, and <merrillbofa.com>, registered with Godaddy.com, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 25, 2009.
On April 2, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bofaml.com>, <mlbofa.com>, <bofamerrill.com>, and <merrillbofa.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 April 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 27, 2009 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 email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A Response was received on April 28, 2009 and was deemed deficient pursuant to ICANN Rule 5 since it was received after the Response deadline.
On May 2, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts trademark rights and states that the disputed domain names are confusingly similar to one or more of the trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
The detail of the Complaint is included where necessary in the Discussion which follows.
Respondent states that it “is a ‘domainer’ group where the group looks to acquire high value domain names and park them with domain parking service providers to generate pay-per-click revenue.”
Respondent states that it “would like to point out that the Complainant filed their complaint after the fact they re-branded their corporate and investment banking unit to Bank of America Merrill Lynch as a result of the merger between Bank of America on Jan. 13, 2009 and Merrill Lynch finalized on Jan. 1, 2009.” Respondent adds that it “registered the at-issue domains before the official announcement of the merger between Bank of America and Merrill Lynch which was announced on the morning of business day Monday Sept., 15. 2008.”
Respondent states further that the disputed domain names “are either to contain incorrect English alphabet abbreviations of their full corporate names or contain generic short 2-letter initials or have a generic word in common with their full corporate names.”
Respondent purports to have adopted the domain names “because BOFA stands for two highly regarded Chinese characters meaning treasure (寶 pronounce “bo” in Cantonese) and rich (發 pronounce “fa” or “fat” in Cantonese).”
1. Bank of America Corporation (“BOAC”) is one of the world’s largest financial establishments.
2. Merrill Lynch & Co. Inc. (“Merrill Lynch”) is one of the world's leading financial management and advisory companies.
3. On September 14, 2008 BOAC announced its agreement to purchase Merrill Lynch.
4. Merrill Lynch is now a wholly-owned subsidiary of BOAC.
5. Respondent is, by its own admission, a dealer in domain names.
6. Respondent registered all four disputed domain names on September 14, 2008.
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.
Preliminary Issue: Deficient Response
Response was submitted in a timely manner but only in electronic format and is therefore deficient in terms of Rule 5. Accordingly, the Panel has discretion whether or not to accept and consider the Response. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint). But see J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
In the exercise of its discretion, the Panel has in this case accepted and considered the Response in spite of non-compliance with the Rules.
Paragraph 4(a)(i) of the Policy requires Complainant to show rights in the claimed trademarks and to show that the disputed domain names are at least confusing similarity to one or more of those trademarks.
The Policy does not distinguish between registered and unregistered trademark rights however a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy.
BOAC is the owner, inter alia, of United States Federal Reg. No. 847,761 for the trademark, “B OF A”, issued April 16, 1968.
Merrill Lynch is the owner, inter alia, of United States Federal Reg. No. 1,280,908 for the trademark ,“MERRILL LYNCH”, issued June 5, 1984, plus a number of other trademarks which combine the letters “ML” with descriptors, for example, “MLCONNECT” (Reg. No. 2,683,016 issued February 4, 2003), “ML MOBILE” (Reg. No. 2,715,363 issued May 13, 2003), and “ML MARKETS” (Reg. No. 2,891,727 issued October 5, 2004).
Complainant argues that <bofaml.com>, <mlbofa.com>, <bofamerrill.com>, and <merrillbofa.com> are confusingly similar to Complainant’s registered marks.
It is widely accepted that the addition of a gTLD such as “.com” is trivial and will not of itself prevent a finding of confusing similarity in the comparison of a certain trademark and domain name.
Stripped of their gTLDs, the Panel finds that the names “bofaml” and “mlbofa” are confusingly similar to the trademark “B OF A” simply because those four letters form the substantive part of those domain names.
The Panel does not consider that “bofamerrill” or “merrillbofa” is confusingly similar to any of the registered trademarks. The joinder of BOAC and Merrill Lynch as co-complainants does not entail the creation of rights in portmanteau trademark combinations such as “B OF A MERRILL LYNCH” or “MERRILL LYNCH B OF A”. The registered trademarks continue to have their own separate proprietorship and, by reason only of the joining of the parties in these proceedings, there are no new rights created in combinations of the registered marks .
Unregistered trademark rights might accrue through use however there is nothing in the Complaint to suggest that since the time of the acquisition of Merrill Lynch by BOAC, there has been use of combination trademarks which might so qualify.
Accordingly the Panel finds that Complainant has established paragraph 4(a)(i) of the Policy in relation to <bofaml.com> and <mlbofa.com>, but has failed to do so in relation to <bofamerrill.com> and <merrillbofa.com>. As such, the ongoing analysis specifically relates only to the two former domain names.
Complainant has the burden to establish that Respondent has no rights
or legitimate interests in the domain name.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate rights
or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
The Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use 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
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant has stated there to be no relationship between it and Respondent and there is no evidence of use or intention to use the domain names in relation to a bona fide offering of goods or services.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
In Response, it is argued that the domain names were registered before announcement of the acquisition of Merrill Lynch by BOAC. On the evidence, that appears to be inaccurate since there is news material in the Complaint reporting on the acquisition and dated September 14, 2008, the same day that the domain names were registered.
Respondent also argues that the disputed domain names are composed of commonplace letters and a known name over which Complainant has no exclusive rights. Respondent purports to have adopted the term “bo fa” because of the favourable meaning of those terms in Cantonese. Whether that claim be true or false, it fails to explain why all four names were registered on the day of the announcement of the Merrill Lynch acquisition or why the names also include the word “merrill” or the initials “ml”.
Finally, Respondent states that it has a legitimate business built on the registration of “high value” generic domain names. The Panel has no issue with the claim that a bona fide business can exist which does no more than trade in generic domain names which do not impinge on third party trademark rights, but the strict question here is whether Respondent has rights or a legitimate interest in the domain names <bofaml.com> and <mlbofa.com>.
The Panel has already found those domain names to be confusingly
similar to Complainant’s trademark.
Respondent admits that it is using the disputed domain names to earn
click-through fees. The Panel finds that
Respondent has not made a bona fide
offering of goods or services under paragraph 4(c)(i), nor a legitimate
noncommercial or fair use under paragraph 4(c)(iii). See
Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)
(holding that the operation of a pay-per-click website at a confusingly similar
domain name was not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii)); Constellation
The Panel finds that Respondent has no rights or legitimate interests in the domain name and so Complainant has satisfied the second limb of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about Paragraphs 4(b)(i)-(iv) is that they are all cases of both registration and use in bad faith. In this case, Complainant alleges that Respondent’s actions fall under Paragraphs 4(b)(i), (iii) and (iv). Complainant also argues that the evidence shows that Respondent both registered and used the domain names in bad faith.
The Panel finds on a balance of the evidence that Respondent registered the domain names opportunistically in the knowledge of the publicized acquisition of Merrill Lynch by BOAC. The domain names were subsequently offered for sale and used in connection with “link farms” promoting the goods and services of third parties having no connection with Complainant.
The Panel has no occasion in this case to turn to an assessment of whether or not the actions of Complainant also fall into one or more of the scenarios outlined in paragraph 4(b) of the Policy since it is satisfied that Respondent registered and then used the domain names in bad faith for the reasons just given.
Complainant has satisfied the third and final limb of the Policy.
Accordingly, it is Ordered that the domain names <bofaml.com> and <mlbofa.com> be TRANSFERRED from Respondent to Complainant.
Having failed to establish at least one of the three elements required under the Policy in relation to the domain names <bofamerrill.com> and <merrillbofa.com>, the Panel concludes that relief shall in those cases be DENIED.
Debrett G. Lyons, Panelist
Dated: May 15, 2009
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