Bank of America Corporation v. Private Limited INT MONITORING SYSTEMS / INT MONITORING SYSTEMS LTD.
Claim Number: FA1811001816940
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is Private Limited INT MONITORING SYSTEMS / INT MONITORING SYSTEMS LTD. (“Respondent”), represented by Tomasz Mazur of Merrill Finance, Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <merrillfinance.com>, registered with EuroDNS S.A.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2018; the Forum received payment on November 17, 2018.
On November 19, 2018, EuroDNS S.A. confirmed by e-mail to the Forum that the <merrillfinance.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 2018 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@merrillfinance.com. Also on November 26, 2018, 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.
A timely Response was received and determined to be complete on December 17, 2018.
On December 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s largest financial institutions, providing banking, investment, wealth management, and other financial products and services. Complainant has rights in the MERRILL LYNCH trademark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,280,908, registered Jun. 5, 1984), and the MERRILL trademark with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 7,028,392, registered May 11, 2009). Respondent’s <merrillfinance.com> domain name is confusingly similar to Complainant’s MERRILL LYNCH trademark as Respondent incorporates a portion of the MERRILL trademark while adding a generic term “financial” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <merrillfinance.com> domain name. Respondent is not licensed, permitted, or otherwise authorized to use Complainant’s MERRILL LYNCH trademark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in order to promote competing financial services.
Respondent registered and uses the <merrillfinance.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it passes off as Complainant to offer competing financial services. Respondent also attempted to conceal its identity through the use of a privacy service. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the MERRILL LYNCH trademark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent, identifying his name as Ivan Merrill, owns and operates the <merrillfinance.com> domain name in connection to its financial services business. Respondent contends that Complainant has no rights in the at-issue trademark as it does not have a registered trademark for the term “Merrill”. Respondent argues the surname “Merrill” is neither a specific nor a rare one. Respondent provides other examples of where the term “Merrill” was used in other domain names not belonging to Complainant. Respondent also argues that Complainant’s bank does not operate in Europe where Respondent uses its disputed domain name.
Respondent also contends that Complainant does not adequately provide evidence to confirm that Respondent fails to conduct its business at the disputed domain name. Finally, Respondent contends Complainant’s case against Respondent is just another act of copyright trolling.
Complainant is the owner of the U.S. trademark registrations:
No. 2,993,782 MERRILL+, registered September 13, 2005
No. 3,862,105 MERRILL EDGE (word), registered October 12, 2010,
No. 1, 280,908 MERRILL LYNCH (word), registered June 5, 1984
No. 1,272,653 MERRILL LYNCH (word), registered April 3, 1984
No. 2,609,362 ASK MERRILL (word), registered August 20, 2002
Complainant is also the owner of:
European Union Trade Mark registration No. 007028392 MERRILL (word), registered May 11, 2009
European Union Trade Mark registration No. 000029280 MERRILL LYNCH (word), registered February 2, 1998
International Trademark registration No. IR1061044 MERRILL EDGE (word), registered July 27, 2010
Australian National Trademark registration No. 1223667 MERRILL (word), registered February 12, 2008
Hong Kong Trademark registration No. 301151883 MERRILL (word), registered February 24, 2009
Canadian Trademark registration No. 1406172 MERRILL (word), registered February 23, 2012
Japanese Trademark registration No. 316113 MERRILL LYNCH (word), registered May 31, 1996
All of the abovementioned trademark registrations covering services in Intl. Class 36.
Respondent registered the <merrillfinance.com> domain name on September 9, 2018
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.
Complainant claims rights in the MERRILL LYNCH trademark based upon registration of the trademark with the USPTO (e.g., Reg. No. 1,280,908, registered Jun. 5, 1984). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. 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 also notes that Complainant has registered the MERRILL trademark with the EUIPO (e.g., Reg. No. 7,028,392, registered May 11, 2009). Registration with any governmental authority is sufficient to demonstrate rights in a trademark. See Glasscutter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶ 4(a)(i)”).
The Panel therefore holds that Complainant’s registration of the MERRILL LYNCH and MERRILL trademark/s with the USPTO and EUIPO respectively is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <merrillfinance.com> domain name is confusingly similar to the MERRILL LYNCH and MERRILL trademarks, as the domain name incorporates the word “MERRILL” from Complainant’s trademark and adds the generic term “finance” and a “.com” gTLD. The Panel notes that the addition of a generic term to a trademark does not distinguish the domain name from the trademark to which it is attached. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD).
In this case, the word “MERRILL” clearly relates to the initial founder of the company Merrill Lynch, which company today is one of Complainant’s divisions. The disputed domain name is indeed confusingly similar to Complainant’s trademark MERRILL, only adding the descriptive term “finance” that in fact further indicate relationship to Complainant and Complainant’s services.
The disputed domain name <merrillfinance.com> is also confusingly similar to Complainant’s trademark MERRILL LYNCH, as the domain name consists of the distinctive first part of Complainant’s two worded trademark, followed by the descriptive term “finance”.
The Panel thus concludes that the disputed domain name is confusingly similar to the two trademarks MERRILL LYNCH and MERRILL, to which Complainant claims to have rights under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant argues that Respondent has no rights or legitimate interests in the <merrillfinance.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MERRILL LYNCH and/or MERRILL trademarks in any way. Even where there is a response, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, the Panel concludes that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
The Panel notes that the WHOIS information of record identifies the registrant of the at-issue domain name as “Private Limited INT MONITORING SYSTEMS / INT MONITORING SYSTEMS LTD,” and no information on the record indicates that Respondent was authorized to register a domain name incorporating Complainant’s trademarks. The Panel further notes that Respondent’s response to Complainant’s complaint identifies Respondent as “Ivan Merrill”, however with no further documentation proving that this is Respondents real name, nor any explanations why Respondent have registered the disputed domain name using a completely different name (“Private Limited INT MONITORING SYSTEMS / INT MONITORING SYSTEMS LTD”).
The Panel therefore find under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <merrillfinance.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <merrillfinance.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the disputed domain name resolves to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel notes that the only evidence of use of the disputed domain name is provided by Complainant, showing screenshots from the website connected to the <merrillfinance.com> domain name. These screenshots shows photos from empty general offices, photos that show no legitimate interest activity, but rather indicate that they are taken from some sites providing temporally office functions or selling the furniture as such. Further, as shown by Complainant, the connected web site contains competing financial services with language copied verbatim from other legitimate websites for financial companies and law firms and false office locations. The Panel agrees with Complainant, that the web site may well give the false impression that it is affiliated with, and authorized by, Complainant. Respondent has not used its opportunity to provide evidence that contradict Complainant’s conclusion; only stated generally that Respondent “has a normal website and office locations”. The Panel is however not convinced by that general statement, especially compared to the evidence provided by Complainant, which rather indicates that Respondent has created a web site connected to the disputed domain name to give a false impression of legitimate interest.
The Panel therefore determines that Respondent does not have rights or legitimate interests in the <merrillfinance.com> domain name.
Complainant claims Respondent’s use of the <merrillfinance.com> domain name to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with a complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant contends that the domain name resolves to a sham website that contains competing financial services with language copied verbatim from other legitimate websites for financial companies and law firms and false office locations.
The Panel agrees with Complainant’s conclusion, and finds that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's MERRILL LYNCH and MERRILL trademarks, it is inconceivable that Respondent could have registered the <merrillfinance.com> domain name without actual and constructive knowledge of Complainant's rights in the trademarks. Respondent states that “the MERRILL is not a registered trademark”, and that “the MERRILL word especially means nothing in Europe”.
The Panel wishes to point out that these statements are not related to facts. Complainant has a valid single word trademark registration for MERRILL, covering the European Union – including Poland, the home country of Respondent. Only word marks that are distinctive can be registered as European Union Trade Marks. In fact, the registered MERRILL trademark, covering financial services in Intl Class 36, is in itself a legal obstacle for someone else to use an identical name (with or without related descriptive terms) for identical services.
The Panel concludes that Respondent registered, and is using, the <merrillfinance.com> domain name with actual, rather than merely constructive knowledge, of Complainant’s rights in at least the pure MERRILL trademark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrillfinance.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 19, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page