DECISION

 

The Bank of New York Mellon and Pershing Investments LLC v. Hash360 Technologies

Claim Number: FA2507002168201

 

PARTIES

Complainant is The Bank of New York Mellon and Pershing Investments LLC ("Complainant"), represented by Johanna Schmitt of Norton Rose Fulbright US LLP, New York, USA. Respondent is Hash360 Technologies ("Respondent"), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pershing-bny.com>, registered with OwnRegistrar, Inc.

 

PANEL

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 Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 28, 2025; Forum received payment on July 28, 2025.

 

On July 29, 2025, OwnRegistrar, Inc. confirmed by e-mail to Forum that the <pershing-bny.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 July 30, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2025 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@pershing-bny.com. Also on July 30, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 20, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

UDRP Rule 3(a) and Forum's Supplemental Rule 1(e) govern situations where, as in the present case, there is more than one Complainant. UDRP Rule 3(a) states that "Any person or entity may initiate an administrative proceeding by submitting a complaint."  This means, of course, that the proceeding may have only one Complainant.

 

However, Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."  This Rule thus means that there may be more than one Complainant in any one proceeding if they have such a nexus or connection that they can each claim that they have rights to the domain name that is in dispute.

 

To take just one example of how these Rules have been applied by panels in the past, it is instructive to look at the decision in Guess? IP Holder L.P. and Guess?, Inc. v. Jerry Guess, FA 2002904 (Forum Aug. 23, 2022), where the Panel said :

 

"While it appears that a single Complainant filed this proceeding, there are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainant argues that they have a sufficient nexus to both claim rights in the Trademark GUESS because Guess? IP Holder L.P. is effectively owned by Guess?, Inc. The Panel will accept Complainant's assertion and will treat both Complainants as a single entity." 

 

There are two Complainants in this matter. They are The Bank of New York Mellon and Pershing Investments LLC which are two separate companies. They both claim the disputed domain name as it includes each of their trademarks, BNY and PERSHING.

 

To justify their both being complainants in the one proceeding, the Complainants advance three arguments; first, that say that Pershing is a subsidiary of BNY; secondly, they say that the domain name uses the PERSHING mark and that it also uses the BNY mark; and thirdly, they say in effect that because of the expenditure by both parties, on matters such as advertising, the public has come to see the two marks to be associated with and used by both companies. The Panel finds that all three of those arguments have been made out. 

 

One need only look at their websites to see how connected are the two complainants. The BNY website states, among other statements: 

 

"BNY Mellon and Pershing Bundle Services to Deliver Comprehensive Investment Solutions to Advisors."

 

The Pershing website is headed "BNP/PERSHING", which seems to put the issue beyond argument. In any event, the Panel notes that as matter of fact, Pershing is a subsidiary of Pershing LLC which is itself a subsidiary of BNY.

 

It is clear, therefore, that the two companies have met the variously expressed tests, i.e., of there being a "nexus", "a sufficient link" or "a relationship" between them, showing their common interest in the outcome of this proceeding.

 

The Panel will therefore treat the two Complainants as a single entity for purposes of this proceeding and the matter may go forward on that basis.

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1.       The Complainant The Bank of New York Mellon ("BNY") is a United States company engaged in the provision of financial and investment services and it has been so engaged since 1784. The Complainant Pershing Investments LLC ("Pershing") is a United States company engaged in the provision of financial and investment services and has been so engaged since at least 1958.

2.       The Complainant BNY provides its goods and services under, inter alia, the trademark for BNY.

3.       The Complainant BNY acquired its registered trademark rights in the BNY trademark by virtue of its registration of that mark with the United States Patent and Trademark Office ("USPTO") registration number 3,117,825, registered on July 18, 2006 and numerous other trademarks for BNY and derivatives registered domestically and internationally.

4.       The Complainant Pershing provides its goods and services under, inter alia, the trademark for PERSHING.

5.       The Complainant Pershing acquired its registered trademark rights in the PERSHING trademark by virtue of its registration of that mark with the USPTO, registration number 2,245,524, registered on May 18, 1999 and numerous other trademarks for PERSHING and derivatives registered domestically and internationally.

6.       The BNY and the PERSHING trademarks have attracted substantial goodwill and are uniquely associated respectively with the Complainants' goods and services.

7.       By reason of the matters aforesaid, the Complainants have a close link and relationship with each other and are both identified with the prestigious and high-quality services provided by them and in particular with the matters arising for consideration in this proceeding.

8.       The Complainants therefore have rights in the aforesaid trademarks within the meaning of Policy ¶ 4(a)(i).

9.       As well as their aforesaid trademarks, the Complainants have registered respectively the <bny.com> domain name and the <bny.com/pershing> domain name that they use in their businesses and in particular for their respective websites at www.bny.com and www.bny.com/pershing, where they market their goods and services under the BNY and PERSHING trademarks.

10.       The Respondent registered the <pershing-bny.com> domain name on June 16, 2025 ("the disputed domain name") which was well subsequent to the Complainants having acquired their aforesaid trademark rights.

11.       The disputed domain name embodies, without the consent of the Complainants, the PERSHING and BNY trademarks, with the addition of a hyphen and the generic Top Level Domain ".com".

12.       The disputed domain name is confusingly similar to the PERSHING and BNY trademarks.

13.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)       the Complainants have not given the Respondent any permission or other consent to use their trademarks in a domain name or in any other way and the Respondent is not affiliated with nor has any relationship with the Complainants;

(b)       the Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i);

(c)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii);

(d)       the Respondent has not used the disputed domain name for a legitimate, noncomnmercial or fair use within the meaning of Policy ¶ 4(c)(iii);

(e)       the Respondent is not known by the disputed domain name and has never acquired any trademark or other rights in the BNY or PERSHING name or mark;

(f)       in view of the Complainants' longstanding trademark rights, the Respondent could never acquire any right or legitimate interest in the disputed domain name;

(g)       the domain name was registered by the Respondent well after the acquisition by the Complainants of their aforesaid trademark rights;

(h)       the Respondent has caused the domain name to resolve to the website of the Complainant at www.bny.com; and

(i)       there is no basis on which it could conceivably be contended that the Respondent has a right or legitimate interest in the domain name.

14.       The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a)       the disputed domain name was registered after the Complainants had established their aforesaid trademark rights and after the Complainants had been using their respective trademarks for many years;

(b)       at the time the Respondent registered the disputed domain name, it had knowledge of the Complainants, their businesses and trademarks which had been used by the Complainants as aforesaid for many years;

(c)       the Respondent registered a confusingly similar domain name and has used it to redirect to the BNY website, thereby demonstrating that it had the intention to retain, control and use the domain name illegitimately in the future to deny to the Complainant the full exercise of their rights as the owners of their respective trademarks, thereby seriously infringing those trademarks and the goodwill arising from them; and

(d)       all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith.

The evidence will therefore establish that the Complainants have been able to make out all of the grounds they must establish and that they are entitled to the relief that they seek.

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainants are prominent United States companies that have been engaged in the provision of financial and investment services for many years.

2.       The Complainant BNY acquired its registered trademark rights in the BNY trademark by virtue of its registration of that mark with the United States Patent and Trademark Office ("USPTO") registration number 3,117,825, registered on July 18, 2006 and numerous other trademarks for BNY and derivatives registered domestically and internationally.

3.       The Complainant Pershing acquired its registered trademark rights in the PERSHING trademark by virtue of its registration of that mark with the USPTO, registration number 2,245,524, registered on May 18, 1999 and numerous other trademarks for PERSHING and derivatives registered domestically and internationally.

4.       The Respondent registered the <pershing-bny.com> domain name on June 16, 2025 ("the disputed domain name") which was well subsequent to the Complainants having acquired their aforesaid trademark rights.

5.        The Respondent has caused the domain name to resolve to the Complainant BNY's website at www.bny.com.

6.       By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the BNY and PERSHING trademarks, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith.

7.       Accordingly, the disputed domain name should be transferred from the Respondent to the Complainants.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainants have rights in a trademark or service mark on which they may rely. The evidence has shown that the Complainant BNY has acquired trademark rights in BNY and that the Complainant Pershing has acquired trademark rights in PERSHING.  In particular, the evidence has shown that the Complainant BNY acquired its registered trademark rights in the BNY trademark by virtue of its registration of that mark with the United States Patent and Trademark Office ("USPTO") registration number 3,117,825, registered on July 18, 2006 and numerous other trademarks for BNY and derivatives registered domestically and internationally. The evidence has also shown that the Complainant Pershing acquired its registered trademark rights in the PERSHING trademark by virtue of its registration of that mark with the USPTO, registration number 2,245,524, registered on May 18, 1999 and numerous other trademarks for PERSHING and derivatives registered domestically and internationally. Both the BNY and the PERSHING trademarks have attracted substantial goodwill and are uniquely associated respectively with the Complainants' goods and services.

The Complainants therefore have trademark rights in the aforesaid trademarks within the meaning of Policy ¶ 4(a)(i).

Each of the PERSHING and the BNY trademarks is registered with respect to various financial services, is in current use and is registered in the name of the respective Complainant or a predecessor-in-interest 

All of the aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainants have thus established their trademark rights pursuant to Policy ¶ 4(a)(i) and hence their standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainants' trademarks. The Panel finds that the disputed domain name is confusingly similar to each of the Complainants' trademarks. It is confusingly similar to the  PERSHING trademark because it contains the whole of that trademark and there is nothing in it that could detract from that conclusion. It is also confusingly similar to the BNY trademark because it contains the whole of that trademark and there is nothing in it that could detract from that conclusion. Thus, internet users would look at the domain name and conclude that it was endeavouring to invoke all of the interests associated with the business represented by both trademarks.

The domain name includes, of course, a hyphen, but the universal practice in this field is that such minor features cannot alter the overwhelming meaning given by a domain name, which in this case consists of the financial services that are provided by the Complainants.

It is also the established practice in this field, and one that is consistently followed, that extensions such as ".com" are disregarded for the purposes of the comparison between a trademark and a domain name, as all domain names require such an extension and its presence does not inform internet users one way or the other whether a domain name is identical or confusingly similar to a trademark. In other words, in the present case, the domain name is really a straight copy of the two trademarks, making it confusingly similar to both of them. There are also many prior UDRP decisions to that effect on similar fact situations.

Applying these well-accepted principles, the Panel finds that the disputed domain name is confusingly similar to the to the BNY and the PERSHING trademarks.

The Complainants have thus made out the first of the three elements that they must establish, as provided in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

It is now well established that the Complainants must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).

 

The Panel finds on the evidence that the Complainants have made out a prima facie case that arises from the following considerations. The Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant, namely:

(a)       the Complainants have not given the Respondent any permission or other consent to use their trademarks in a domain name or in any other way and the Respondent is not affiliated with nor has any relationship with the Complainants in any way; thus, it could be said that the domain name could have been registered and used with anything like the consent of the Complainants;

(b)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that it is known by the domain name or indeed that it is known by any name other than its own;

(c)       the Respondent is not known by the disputed domain name and has never acquired any trademark or other rights in the BNY or PERSHING name or mark; this is self-evident and in any case has been made out on the evidence; thus, there is no way in which the Respondent could make out a case that it was acting pursuant to any trademark rights it might have, because any such action would be a serious infringement of the Complainants' trademarks;

(d)       in view of the Complainants' longstanding trademark rights, the Respondent could never have acquired any right or legitimate interest in the disputed domain name and could never do so in the future; the totality of the evidence shows that none of its conduct could give rise to a right or legitimate interest on the part of the Respondent in the domain name; this is the essence of this case, namely that the Respondent has not yet used the domain name, but has nevertheless registered a domain name that gives all the appearance of being an official domain name of the Complainants and which is now being kept as a loaded gun, primed and ready for any use that the Respondent choses to make of it, which would in all probability be a use for a nefarious purpose;

(e)       the Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i); there is nothing bona fide about the subterfuge in which the Respondent has engaged;

(f)       the Respondent has not used the disputed domain name for a legitimate, noncomnmercial or fair use within the meaning of Policy ¶ 4(c)(iii); clearly, its use is illegitimate, it is commercial, and it is not fair, either to the Complainant or to internet users who are clearly being misled;

(g)       the domain name was registered by the Respondent well after the acquisition by the Complainants of their aforesaid trademark rights; thus, the Respondent must have known that the registration of the domain name and any use of it, even simply to retain it as loaded gun ready to be used for whatever nefarious purpose the Respondent might choose in the future, would be improper and an infringement of the Complainants' trademarks;

(h)       the evidence shows that the Respondent has caused the domain name to resolve to the website of the Complainant BNY at www.bny.com; as has been noted in other decisions in this field, it hard to see why the Respondent would want to divert the domain name to one of the Complainants' own websites, leaving open the probability that it was not done for any legitimate purpose but was more likely to have been done in preparation for some future improper use; and

(i)       the evidence also shows that there is no other basis on which it could conceivably be contended that the Respondent has a right or legitimate interest in the domain name; what the Respondent has done is a clear infringement of the Complainants' trademarks which negates any possibility that it could give rise to a right or legitimate interest in the domain name on the part of the Respondent.

The Complainants have thus made out a persuasive and detailed case on the evidence for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

All of these matters make out the prima facie case against the Respondent. The Respondent is in default and has not provided any evidence to the contrary of the Complainant's evidence.

 

The Complainants have thus made out the second of the three elements that they must establish, as provided in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainants must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

In view of the evidence discussed above, which is equally as applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat here, it is clear that the Complainants have made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration of the domain name and has continued in that conduct after its registration by use, namely by continuing to hold it, causing it to resolve to the Complainant BNY's website, and holding it in reserve to use it improperly. It is equally clear from the evidence that the Respondent has used the domain name in bad faith in the deception of the public, thus depriving the Complainants of full and complete control of their trademarks to which they were entitled. It is therefore clear from the evidence that, as the Complainant has submitted:

(a)       the disputed domain name was registered after the Complainants had established their aforesaid trademark rights and after the Complainants had been using their respective trademarks for many years; thus, the actions of the Respondent in registering the domain name and keeping it primed and ready for later use was a clear infringement of the Complainants' trademarks and also a clear case of passing off, as the Respondent obviously intended that the domain name should be seen as an official domain name of the Complainants, which it was not; such false conduct was, by definition, bad faith;

(b)       Respondent registered the disputed domain name, it had knowledge of the Complainants, their businesses and trademarks which had been used by the Complainants as aforesaid for many years; whether the test is actual or constructive bad faith, the Respondent must have known of the Complainants and their renown and their trademarks, as it would not otherwise have contrived to design a domain name that was so obviously a copy of the Complainants' trademarks; 

(c)       without repeating it, the evidence shows beyond argument that the Respondent registered a confusingly similar domain name and has used it to redirect to the BNY website, thereby demonstrating that it had the intention to retain, control and use the domain name illegitimately in the future to deny to the Complainants the full exercise of their rights as the owners of their respective trademarks, thereby seriously infringing those trademarks and the goodwill arising from them; and

(d)       all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith.

 Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the BNY and PERSHING trademarks and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainants, their potential customers and internet users in general, impersonated and passed itself off as the Complainants, infringed and tarnished the Complainants' trademarks, and actively sought to mislead internet users to believe that the domain name was genuine and official when it was neither, and that whatever use was made of it in the future would be genuine and official which it clearly would not be. In reality, the Respondent was simply using the Complainants' good names and trademarks to make money by some means down the track.

The Complainants have thus made out the third of the three elements that they must establish, as provided in Policy ¶ 4(a)(iii).

The Complainants have presented a detailed and persuasive case consisting of evidence that has established all of the constituent elements that must be proved under the Policy.

The Complainants have also cited numerous prior UDRP decisions which support all of its contentions.

The Complainants have therefore established all the elements that they must show under the Policy and are entitled to the relief they seek, namely transfer of the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pershing-bny.com> domain name be TRANSFERRED from Respondent to Complainants.

 

 

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: August 22, 2025