Bank of America Corporation v. LinYanXiao
Claim Number: FA2109001963923
Complainant is Bank of America Corporation (“Complainant”), represented by Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is LinYanXiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankofamericabanking.com>, <bankofamericaautoloans.com>, <bankofamericaportal.com>, <bankofamericabusinesscreditcards.com>, <bankofamericacashpaycard.com>, <bankofamericacreditcardrewards.com>, <bankofamericadigitalwallet.com>, <bankofamericahomeequity.com>, <bankofamericahomeequityloan.com>, <bankofamericamyhealth.com>, <bankofamericaprepaid.com>, <bankofamericatravelcenter.com>, <bankofamericavisacard.com>, <bankofamericawiretransfer.com>, <bankofamericaadvantagebanking.com>, <bankofamericacreditcardpayment.com>, <bankofamericastudentloan.com>, <bankofamericamortgagepayment.com>, <bankofamericacommercialcard.com>, <bankofamericacc.com>, <bankofamericahealthsavingsaccount.com>, <bankofamericaworldpoints.com>, <bankofamericamyrewards.com>, <bankofamericaappointment.com>, <bankofamericaauto.com>, <bankofamericancards.com> and <merrilllynchedge.com>, registered with 22net, Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2021; the Forum received payment on September 15, 2021.
On September 16, 2021, 22net, Inc. confirmed by e-mail to the Forum that the <bankofamericabanking.com>, <bankofamericaautoloans.com>, <bankofamericaportal.com>, <bankofamericabusinesscreditcards.com>, <bankofamericacashpaycard.com>, <bankofamericacreditcardrewards.com>, <bankofamericadigitalwallet.com>, <bankofamericahomeequity.com>, <bankofamericahomeequityloan.com>, <bankofamericamyhealth.com>, <bankofamericaprepaid.com>, <bankofamericatravelcenter.com>, <bankofamericavisacard.com>, <bankofamericawiretransfer.com>, <bankofamericaadvantagebanking.com>, <bankofamericacreditcardpayment.com>, <bankofamericastudentloan.com>, <bankofamericamortgagepayment.com>, <bankofamericacommercialcard.com>, <bankofamericacc.com>, <bankofamericahealthsavingsaccount.com>, <bankofamericaworldpoints.com>, <bankofamericamyrewards.com>, <bankofamericaappointment.com>, <bankofamericaauto.com>, <bankofamericancards.com> and <merrilllynchedge.com>
domain names are registered with 22net, Inc. and that Respondent is the current registrant of the names. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. 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 20, 2021, the Forum served the Complaint and all Annexes, including a English and Chinese language Written Notice of the Complaint, setting a deadline of October 12, 2021 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@bankofamericabanking.com, postmaster@bankofamericaautoloans.com, postmaster@bankofamericaportal.com, postmaster@bankofamericabusinesscreditcards.com, postmaster@bankofamericacashpaycard.com, postmaster@bankofamericacreditcardrewards.com, postmaster@bankofamericadigitalwallet.com, postmaster@bankofamericahomeequity.com, postmaster@bankofamericahomeequityloan.com, postmaster@bankofamericamyhealth.com, postmaster@bankofamericaprepaid.com, postmaster@bankofamericatravelcenter.com, postmaster@bankofamericavisacard.com, postmaster@bankofamericawiretransfer.com, postmaster@bankofamericaadvantagebanking.com, postmaster@bankofamericacreditcardpayment.com, postmaster@bankofamericastudentloan.com, postmaster@bankofamericamortgagepayment.com, postmaster@bankofamericacommercialcard.com, postmaster@bankofamericacc.com, postmaster@bankofamericahealthsavingsaccount.com, postmaster@bankofamericaworldpoints.com, postmaster@bankofamericamyrewards.com, postmaster@bankofamericaappointment.com, postmaster@bankofamericaauto.com, postmaster@bankofamericancards.com, postmaster@merrilllynchedge.com. Also on September 20, 2021, the English and Chinese language 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 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Panel notes the Chinese language Registration Agreements. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant submits that Respondent is capable of understanding English based only on the facts that the domain names combine the relevant trademarks with English language words pertaining to the services offered by Complainant websites and that the resolving websites use English language links.
Albeit that these facts bare prove a proficiency in English, the preponderance of UDRP decisions have treated this argument as enough and so the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in BANK OF AMERICA, MERRILL LYNCH and MERRILL EDGE. Complainant holds national registrations for those trademarks and submits that the domain names are confusingly similar to one or more of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides banking and other financial services and is the owner of the following United States Patent and Trademark Office (“USPTO”) trade mark registrations: Reg. No. 853,860, registered July 30, 1968 for BANK OF AMERICA; Reg. No. 5,837,719, registered August 20, 2019 for MERRILL LYNCH; and Reg. No. 4,080,884, registered January 3, 2012 for MERRILL EDGE;
2. the disputed domain names were all registered in March and April of 2021 and resolve to websites with various links to banking or other financial offerings having no connection with Complainant; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademarks or register any domain name incorporating its trademarks.
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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant therefore has rights since it provides proof of its registration of the trademarks with the USPTO, a national trademark authority.
All but one of the disputed domain names combine the BANK OF AMERICA trademark with descriptive terms such as “banking”, “credit card rewards” and “digital wallet”. The final domain name is a combination of two of Complainant’s trademarks, MERRILL LYNCH and MERRILL EDGE. Otherwise, all of the domain names terminate with the “.com” gTLD.
For the purposes of comparison of the disputed domain names with the trademarks, the gTLD “.com” can be disregarded as trivial. Likewise, the descriptive words or phrases are of no distinctive value. Finally, it is generally accepted by UDRP panelists that the combination of one or more of a complainant’s marks does not avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
The Panel finds that the domain names are confusingly similar to one or more of Complainant’s trademarks for the purposes of this aspect of the Policy[iii]. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The name of the underlying domain name holder, as disclosed by the Registrar, is “LinYanXiao”, which does not provide any indication that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use any of the trademarks.
Complainant provides screenshots of the resolving websites, which feature links for various banking and banking adjacent services. Such use – whether it be to attract Internet users to a site offering competitive services to that offered by Complainant, or simply to unrelated goods or services – is not a bona fide offering or legitimate noncommercial or fair use under the Policy[v]. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found the disputed domain names to be confusingly similar to the trademarks. The Panel accepts Complainant’s assertion that the resolving websites exist for commercial gain in one form or another. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain names to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of those websites by implying to internet users that they will reach Complainant’s website[vi].
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamericabanking.com>, <bankofamericaautoloans.com>, <bankofamericaportal.com>, <bankofamericabusinesscreditcards.com>, <bankofamericacashpaycard.com>, <bankofamericacreditcardrewards.com>, <bankofamericadigitalwallet.com>, <bankofamericahomeequity.com>, <bankofamericahomeequityloan.com>, <bankofamericamyhealth.com>, <bankofamericaprepaid.com>, <bankofamericatravelcenter.com>, <bankofamericavisacard.com>, <bankofamericawiretransfer.com>, <bankofamericaadvantagebanking.com>, <bankofamericacreditcardpayment.com>, <bankofamericastudentloan.com>, <bankofamericamortgagepayment.com>, <bankofamericacommercialcard.com>, <bankofamericacc.com>, <bankofamericahealthsavingsaccount.com>, <bankofamericaworldpoints.com>, <bankofamericamyrewards.com>, <bankofamericaappointment.com>, <bankofamericaauto.com>, <bankofamericancards.com>, and <merrilllynchedge.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: October 22, 2021
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[iii] See, for example, Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i); Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Expedia, Inc. v. Compaid, FA 520654 (Forum Aug. 30, 2005) finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”); Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”.
[vi] See, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
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