Bank of America Corporation v. Li Jin Dong
Claim Number: FA1711001759835
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is Li Jin Dong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> registered with Chengdu West Dimension Digital Technology Co., 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2017; the Forum received payment on November 24, 2017.
On Nov 27, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 November 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 2017 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@meriiledge.com, postmaster@merilleedge.com, postmaster@merrilyedge.com, postmaster@bankofamwrixa.com. Also on November 27, 2017, 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 December 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, Bank of America Corporation, is one of the world’s largest financial institutions and provides banking, investment, wealth management, and other financial products and services, including investment banking and trading. In connection with this business, Complainant acquired Merrill Lynch & Co. Inc. in 2009; and has operated the popular MERRILL EDGE online brokerage service since 2010. Complainant therefore has rights in the BANK OF AMERICA and MERRILL EDGE marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. BANK OF AMERICA—Reg. No. 853,860, registered Jul. 30, 1968; MERRILL EDGE—Reg. No. 3,862,105, registered Oct. 12, 2010). Respondent’s <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names are confusingly similar to Complainant’s marks, as each is simply a misspelling or typosquatted domain name based on Complainant’s marks.
Respondent has no rights or legitimate interests in the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names. Respondent is not commonly known by any of the disputed domain names, nor has Complainant authorized or licensed Respondent to use the BANK OF AMERICA or MERRILL EDGE marks in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the names, without permission or authorization from Complainant, to redirect Internet users to click-through linking portals which include links to competing financial services. Further, each domain name is an example of typosquatting.
Respondent registered and is using the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names in bad faith. Respondent has exhibited a pattern of bad faith registration and use of domain names based on the marks of well-known third parties. Additionally, Respondent uses the confusingly similar domain names to attract users to pages of competing links for commercial gain. Further, Respondent’s typosquatting behavior is demonstrative of its bad faith. Finally, it is clear Respondent had actual knowledge of Complainant and its rights in the marks at the time it registered and subsequently used the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names.
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(f), 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 (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.”).
Preliminary Issue: Language of Proceeding
Chinese is the language of the registration agreement. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is proficient and can communicate in the English language. After considering the circumstance of the present case, the Panel determines that the proceeding should be in English.
Complainant claims rights in the BANK OF AMERICA and MERRILL EDGE marks based upon registration of the mark with the USPTO (e.g. BANK OF AMERICA—Reg. No. 853,860, registered Jul. 30, 1968; MERRILL EDGE—Reg. No. 3,862,105, registered Oct. 12, 2010). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel finds that Complainant’s registration of the BANK OF AMERICA and MERRILL EDGE marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names are confusingly similar to the BANK OF AMERICA or MERRILL EDGE mark, as each name is comprised completely of a misspelling of one of the marks. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Each domain name also omits the spacing in the mark and adds the “.com” generic top-level domain (“gTLD”), changes which are irrelevant in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel finds that each of the disputed domain names is confusingly similar to the BANK OF AMERICA or MERRILL EDGE marks per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 (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 (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 has no rights or legitimate interests in the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, or <bankofamwrixa.com> domain names, as Respondent is not commonly known by any of the disputed domain names, nor has Complainant authorized Respondent to use the BANK OF AMERICA or MERRILL EDGE marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Jin Dong Li / Li Jun Dong.” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website which is being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant contends the domain names resolves to a website displaying pay-per-click links, some of which send users to competitor’s websites. The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Complainant also claims Respondent’s domain names are simply typosquatted versions of Complainant’s marks and therefore Respondent cannot have rights and legitimate interests therein. Typosquatting is the practice of taking advantage of Internet users’ typographical errors and can be evidence of a lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant claims that the domain names comprise only of simple misspellings of the BANK OF AMERICA and MERRILL EDGE marks and therefore are examples of typosquatting. The Panel agrees and finds Respondent lacks rights and legitimate interests in the domain names per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant contends Respondent’s registration of the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names is part of a pattern of bad faith registration and use. A pattern of bad faith registration can be established by a showing of prior registrations which infringe on third-party marks and/or through a showing of multiple infringing domain names in a case. Such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant includes a list of purportedly infringing domain names registered by Respondent, and also points to the multiple infringing domain names in the current case. The Panel finds that the registration and use of the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names is part a of pattern and is evidence of bad faith per Policy ¶ 4(b)(ii).
Complainant also contends that Respondent’s bad faith is indicated by its use of the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names to link to third party websites which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends the domain name resolves to a webpage displaying links to third party websites, some of which belong to competitors of Complainant. The Panel finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Complainant contends that Respondent’s typosquatting behavior demonstrates its bad faith registration and use of the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names. A finding of typosquatting can be independent evidence of bad faith per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Complainant claims the minor misspellings of its marks Respondent used in the domain names is typosquatting behavior. The Panel agrees and finds Respondent to have registered and used the domain names in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's BANK OF AMERICA and MERRILL EDGE marks, Respondent registered the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names with actual and/or constructive knowledge of Complainant's rights in the mark. Complainant further asserts that Respondent’s typosquatting behavior and its use of the domain names to link to financial industry competitors of Complainant’s indicates it had actual knowledge of Complainant’s rights. Any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <meriiledge.com>, <merilleedge.com>, <merrilyedge.com>, and <bankofamwrixa.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 21, 2017
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