Bank of America Corporation v. VistaPrint Technologies Ltd
Claim Number: FA1410001583575
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrill-lynchinc.com>, <merrill-lynchinc.net>, <merrilllynchinc.net>, <merrilllynchjob.com>, <merilllynchltd.org>, <hrmerrilllynch.com>, <merrilllynchcoinc.com>, <merrilllynchpaymaster.com>, and <merrilllynchcoinc.net>, registered with Tucows Domains Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2014; the National Arbitration Forum received payment on October 8, 2014.
On October 8, 2014 and October 14, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <merrill-lynchinc.com>, <merrill-lynchinc.net>, <merrilllynchinc.net>, <merrilllynchjob.com>, <merilllynchltd.org>, <hrmerrilllynch.com>, <merrilllynchcoinc.com>, <merrilllynchpaymaster.com>, and <merrilllynchcoinc.net> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2014 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@merrill-lynchinc.com, postmaster@merrill-lynchinc.net, postmaster@merrilllynchinc.net, postmaster@merrilllynchjob.com, postmaster@merilllynchltd.org, postmaster@hrmerrilllynch.com, postmaster@merrilllynchcoinc.com, postmaster@merrilllynchpaymaster.com, and postmaster@merrilllynchcoinc.net. Also on October 14, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <merrill-lynchinc.com>, <merrill-lynchinc.net>, <merrilllynchinc.net>, <merrilllynchjob.com>, <merilllynchltd.org>, <hrmerrilllynch.com>, <merrilllynchcoinc.com>, <merrilllynchpaymaster.com>, and <merrilllynchcoinc.net> domain names are confusingly similar to Complainant’s MERRILL LYNCH mark.
2. Respondent does not have any rights or legitimate interests in the <merrill-lynchinc.com>, <merrill-lynchinc.net>, <merrilllynchinc.net>, <merrilllynchjob.com>, <merilllynchltd.org>, <hrmerrilllynch.com>, <merrilllynchcoinc.com>, <merrilllynchpaymaster.com>, and <merrilllynchcoinc.net> domain names.
3. Respondent registered and uses the <merrill-lynchinc.com>, <merrill-lynchinc.net>, <merrilllynchinc.net>, <merrilllynchjob.com>, <merilllynchltd.org>, <hrmerrilllynch.com>, <merrilllynchcoinc.com>, <merrilllynchpaymaster.com>, and <merrilllynchcoinc.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the MERRILL LYNCH mark for financial services. The mark is registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,280,908, registered Jan. 5, 1984).
Respondent registered the disputed domain names on or after August 25, 2014, and uses them to promote it’s own services.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s registration of its MERRILL LYNCH mark with the United States Patent and Trademark Office ("USPTO") establishes its rights in the mark for purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <merrill-lynchinc.com>, <merrill-lynchinc.net>, <merrilllynchinc.net>, <merrilllynchjob.com>, <merilllynchltd.org>, <hrmerrilllynch.com>, <merrilllynchcoinc.com>, <merrilllynchpaymaster.com>, and <merrilllynchcoinc.net> domain names are confusingly similar to the MERRILL LYNCH mark as they merely add descriptive business terms to Complainant’s mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Adding the gTLDs “.com,” “.org” or “.net” does not distinguish the domain names from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel notes that the <merilllynchltd.org> domain name misspells Complainant’s mark by omitting one letter. The Panel finds this change does not avoid confusing similarity. See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Thus, the Panel finds that all of the disputed domain names are confusingly similar to Complainant’s MERRILL LYNCH mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not known by the disputed domain names because it is the VistaPrint business known for business card creation. The Panel notes that “VistaPrint Technologies Ltd” is the listed registrant of record for all of the domain names. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant claims that Respondent uses all of the disputed domain names to promote VistaPrint services, which are unrelated to Complainant’s business. The Panel notes that the domain names resolve to Respondent’s own advertisements claiming that one can “Create Your Website in Minutes.” The Panel finds that this use is not bona fide under Policy ¶ 4(c)(i), and is not a legitimate noncommercial or fair under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is frequently the subject of UDRP decisions wherein Respondent is found to have registered and used domain names in bad faith. See, e.g., Solazyme, Inc. v. VistaPrint Technologies Ltd, FA1408001574178 (Nat. Arb. Forum Sept. 11, 2014); see also Zoetis Inc. and Zoetis Products LLC v. VistaPrint Technologies Ltd, FA1403001550102 (Nat. Arb. Forum May 5, 2014). The Panel agrees and finds that adverse prior UDRP decisions against Respondent indicates a pattern of abuse, bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant argues that Respondent uses the disputed domain names to capitalize on the likelihood that Internet users will associate the domain names with the MERRILL LYNCH brand. The Panel agrees and notes that Respondent is using these domain names to resolve to VistaPrint promotions, which Respondent no doubt profits from. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent was fully aware of Complainant’s rights in the mark when registering all of the disputed domain names. The Panel agrees and finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights, further bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds that 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 <merrill-lynchinc.com>, <merrill-lynchinc.net>, <merrilllynchinc.net>, <merrilllynchjob.com>, <merilllynchltd.org>, <hrmerrilllynch.com>, <merrilllynchcoinc.com>, <merrilllynchpaymaster.com>, and <merrilllynchcoinc.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 3, 2014
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