Bank of America Corporation v. Jennifer Pierce / Great Mistakes
Claim Number: FA1410001585317
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is Jennifer Pierce / Great Mistakes (“Respondent”), United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <merrilllynchboa.us>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2014; the National Arbitration Forum received payment on October 17, 2014.
On October 17, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <merrilllynchboa.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the usTLD Domain Name Dispute Resolution Policy (the “Policy”).
On October 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@merrilllynchboa.us. Also on October 20, 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 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 usTLD 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 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
Complainant uses MERRILL LYNCH and BOFA to promote its financial and banking services. The marks are registered with the United States Patent and Trademark Office ("USPTO"). Further, Complainant has registered the BANK OF AMERICA MERRILL LYNCH mark (e.g., USPTO Reg. No. 4,555,907, registered June 24, 2014, filed Nov. 14, 2013). The domain name is confusingly similar to the marks.
Respondent has no right or legitimate interest in the domain name. Respondent has no rights in any trademark identical to the domain name. Respondent is not commonly known by the domain name. Further, Respondent’s only use of the <merrilllynchboa.us> domain name is to send users to a website that claims to provide “Bank of American Business Consulting”—but which is a phishing scam to retrieve the personal information of Internet users.
Respondent registered and used this domain name in bad faith. Respondent profits from a scheme of confusing Internet users into believing they are arriving at legitimate services offered by Complainant. Respondent had to have known of Complainant’s rights when registering and using this domain name.
B. Respondent
Respondent did not submit a formal response; however, the National Arbitration Forum received multiple e-mails from Respondent in which Respondent consents to transfer the domain name to Complainant. Respondent says that she had no role in registering the <merrilllynchboa.us> domain name, has nothing to do with the disputed domain name, and does not know why it is registered to her.
Preliminary Issue: Consent to Transfer
Respondent consents to the transfer of the <merrilllynchboa.us> domain name.
As Respondent agrees to transfer the disputed domain name to Complainant, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <merrilllynchboa.us> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Complainant has rights in the MERRILL LYNCH, BOFA, and BANK OF AMERICA MERRILL LYNCH marks through registration with the United States Patent and Trademark Office ("USPTO"). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (USPTO registration is sufficient to establish Policy ¶ 4(a)(i)] rights). Complainant’s rights in the MERRILL LYNCH and BOFA marks predate the registration of the <merrilllynchboa.us> domain name. Complainant rights in the BANK OF AMERICA MERRILL LYNCH mark are effective Nov. 14, 2013, the application filing date. Therefore, Complainant’s rights in the BANK OF AMERICA MERRILL LYNCH mark predate the registration of the <merrilllynchboa.us> domain name on September 19, 2014.
The <merrilllynchboa.us> domain name is confusingly similar to Complainant’s marks name under Policy ¶ 4(a)(i). The <merrilllynchboa.us> domain name alters the BANK OF AMERICA MERRILL LYNCH by transposing the two underlying phrases, and abbreviating BANK OF AMERICA as “boa.” These changes, along with adding the ccTLD “.us” do not sufficiently distinguish the domain name under Policy ¶ 4(a)(i). See, e.g., Pearl Jam, A Gen. P’ship v. Lyn, FA 221238 (Nat. Arb. Forum Feb. 16, 2004) (finding that merely transposing the elements of a mark in a domain name, in this case PEARL JAM in the <jampearl.com> domain name, does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).
Accordingly, it is Ordered that the <merrilllynchboa.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 1, 2014
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