Bank of America Corporation v. Domain Admin, Whois Privacy Corp.
Claim Number: FA1508001635604
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, USA. Respondent is Domain Admin, Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrillgold.com>, <merrillmetals.com>, <merrillira.com>, and <merrillmutual.com>, registered with Internet.Bs Corp.; and <merrillsilver.com> and <merrillbullion.com>, registered with Tld Registrar Solutions Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2015; the Forum received payment on August 28, 2015.
On Septmeber 1, 2015, Tld Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <merrillsilver.com> and <merrillbullion.com> domain names are registered with Tld Registrar Solutions Ltd. and that Respondent is the current registrant of the names. Tld Registrar Solutions Ltd. has verified that Respondent is bound by the Tld Registrar Solutions Ltd. 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 Septmeber 1, 2015 Internet.Bs Corp. confirmed by e-mail to the Forum that the <merrillgold.com>, <merrillmetals.com>, and <merrillmutual.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 September 3, 2015 Internet.Bs Corp. confirmed by e-mail to the Forum that the <merrillira.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 September 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2015 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@merrillgold.com, postmaster@merrillsilver.com, postmaster@merrillbullion.com, postmaster@merrillmetals.com, postmaster@merrillira.com, and postmaster@merrillmutual.com. Also on September 11, 2015, 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 October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is the owner of a trademark registration for the MERRILL LYNCH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,280,908, registered June 5, 1984), as well as for the MERRILL trademark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 7028392, registered May 11, 2009). The marks are used in connection with brokerage, underwriting, and related financial services. The <merrillgold.com>, <merrillsilver.com>, <merrillbullion.com>, <merrillmetals.com>, <merrillira.com>, and <merrillmutual.com> domain names are confusingly similar because the domains contain either the entire MERRILL mark or a dominant portion of the MERRILL LYNCH mark in addition to adding generic or descriptive terms and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests. Respondent is not commonly known as any of the disputed domain names, nor is Respondent a licensee of Complainant. Further, the domain names resolve to a webpage that advertises competing services, which is neither a bona fide offering nor a legitimate noncommercial or fair use.
iii) Respondent has engaged in bad faith registration and use. Respondent has created a likelihood of confusion from which it intends to or is profiting. Further, due to the fame of Complainant’s marks and its prior trademark registrations, Respondent must have had actual knowledge of Complainant’s rights at the time the disputed domain names were registered.
B. Respondent
Respondent failed to submit a timely response. The Panel notes that <merrillmutual.com> was registered on July 14, 2013;<merrillira.com> and <merrillgold.com> were registered on July 18, 2013; <merrillmetals.com> was registered on January 15, 2014; and <merrillbullion.com> and <merrillsilver.com> were registered on April 21, 2015.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed 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(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.”).
Complainant is the owner of a trademark registration for the MERRILL LYNCH mark with the USPTO (e.g., Reg. No. 1,280,908, registered June 5, 1984), as well as for the MERRILL trademark with the OHIM (e.g., Reg. No. 7,028,392, registered May 11, 2009). The marks are used in connection with brokerage, underwriting, and related financial services. The Panel finds that registrations with the USPTO and OHIM are both sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)).
Complainant argues that the <merrillgold.com>, <merrillsilver.com>, <merrillbullion.com>, <merrillmetals.com>, <merrillira.com>, and <merrillmutual.com> domain names are confusingly similar to both the MERRILL LYNCH and MERRILL trademarks. Complainant notes that the domain names contain the entire MERRILL mark as well as a dominant portion of the MERRILL LYNCH trademark. Complainant also notes that all of the domain names add the gTLD “.com,” which provides no distinguishing relief for Respondent. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Further, the only remaining difference is the addition of generic or descriptive terms such as “gold,” “silver,” “bullion,” “metals,” “ira,” and “mutual.” Prior panels have established a confusing similarity where the respondent adds such terms to a domain name that contains either the entire mark at issue, or a dominant portion thereof. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademark for CATERPILLER DESIGN). Therefore, the Panel finds that the disputed domain names are confusingly similar to the MERRILL LYNCH and MERRILL marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the MERRILL LYNCH or MERRILL marks in domain names. The Panel notes that “Domain Admin” is listed as the registrant of record for the disputed domain names. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant has provided evidence that the domain names are being used to offer competing financial services. The Panel notes that the <merrillira.com>, <merrillmutual.com>, <merrillbullion.com>, and <merrillgold.com> domain names resolve to web pages that offer financial services related to IRAs and mutual funds. While Complainant has not provided screenshots of the <merrillmetls.com> and <merrillsilver.com> domain names, Complainant argues that the content of their respective resolving web pages is the same as the aforementioned content regarding competing services. Prior panels have found that use of a confusingly similar domain name to offer competing services cannot amount to a bona fide offering or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel declines to grant Respondent rights under Policy ¶¶ 4(c)(i) and (iii) in the <merrillira.com>, <merrillmutual.com>, <merrillbullion.com>, and <merrillgold.com> domain names. As the Panel finds that the content of the <merrillmetls.com> and <merrillsilver.com> domain names also relates to competing services in the absence of Response, it also declines Respondent rights under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that a likelihood of confusion exists because the domain names resolve to web pages that advertise services that are the same as those services advertised under the MERRILL LYNCH and MERRILL trademarks. Complainant also notes that the resolving web pages even go so far as to include a stylized version of one of Complainant’s registered trademarks. Furthermore, Complainant argues that Respondent is presumably profiting from this behavior. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name resolved to a webpage advertising competing services. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Therefore, as the Panel finds that a likelihood of confusion exists, and that Respondent is profiting, it finds bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant also contends that in light of the fame and notoriety of its MERRILL LYNCH and MERRILL trademarks, it is inconceivable that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights. Complainant adds that its trademark registrations for both marks existed well before the registration of all of the disputed domain names. As the Panel agrees with Complainant in that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names, it finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrillgold.com>, <merrillsilver.com>, <merrillbullion.com>, <merrillmetals.com>, <merrillira.com>, and <merrillmutual.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 19, 2015
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