Bank of America Corporation v. VistaPrint Technologies Ltd
Claim Number: FA1410001583581
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 NAME
The domain name at issue is <merilllynchfirm.us>, 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, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <merilllynchfirm.us> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 the usTLD Policy (the “Policy”).
On October 13, 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@merilllynchfirm.us. Also on October 13, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 <merilllynchfirm.us> domain name is confusingly similar to Complainant’s MERRILL LYNCH mark.
2. Respondent does not have any rights or legitimate interests in the <merilllynchfirm.us> domain name.
3. Respondent registered and uses the <merilllynchfirm.us> domain name 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 name on August 25, 2014, and uses it 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 <merilllynchfirm.us> domain name adds the generic term “firm” and the usTLD to Complainant’s MERRILL LYNCH mark, and removes a space and the letter “r.” The country-code top-level domain “.us” and the removal of the space are not relevant to a Policy ¶ 4(a)(i) determination. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The addition of the generic term “firm” in the disputed domain name does not distinguish it from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The removal of the letter “r” from MERRILL does nothing to set the disputed domain name apart form Complainant’s mark. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark). Accordingly, the Panel finds the <merilllynchfirm.us> confusingly similar to the 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 claims that Respondent is not known by the <merilllynchfirm.us> domain name. The Panel notes that “VistaPrint Technologies Ltd” is listed as the registrant of record for the disputed domain name. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel made no finding for the respondent under Policy ¶ 4(c)(ii) when nothing in the record suggested the respondent was commonly known by the disputed domain name. The Panel similarly concludes that Respondent is not commonly known by this disputed domain name under Policy ¶ 4(c)(iii).
Complainant argues that Respondent is using the domain name to promote VistaPrint services. The Panel notes that Respondent is offering website services through the domain name’s resolving website. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel held that a domain name was not being put to a bona fide offering when used to promote an unrelated business venture. The Panel finds that using the <merilllynchfirm.us> domain name to promote website services is not an acceptable use under Policy ¶¶ 4(c)(ii) or (iv).
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 name 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 the disputed domain name to resolve to VistaPrint promotions, which Respondent no doubt profits from. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found that using a confusingly similar domain name to promote an unrelated business could create a Policy ¶ 4(b)(iv) likelihood for confusion from which bad faith could be inferred. Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent was aware of Complainant’s rights in the mark when registering the disputed domain name. 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 usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merilllynchfirm.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 3, 2014
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