Bank of America Corporation v. Arturo Torres sato
Claim Number: FA1911001870116
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Arturo Torres sato (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <merrilllynchbofa.com>, registered with eNom, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2019; the Forum received payment on November 6, 2019.
On November 7, 2019, eNom, LLC confirmed by e-mail to the Forum that the <merrilllynchbofa.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2019 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 email@example.com. Also on November 8, 2019, 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 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant is one of the world’s largest financial institutions, providing banking, investment, wealth management, and other financial products and services, including investment banking and trading.
Complainant has rights in the MERRILL LYNCH and BOFA marks through their registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <merrilllynchbofa.com> domain name is confusingly similar to Complainant’s MERRIL LYNCH and BOFA marks as it fully incorporates the marks in the domain name.
Respondent has no rights or legitimate interests in the <merrilllynchbofa.com> domain name as Respondent is not commonly known by the at-issue domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent likely uses email addresses associated with the disputed domain name to confuse internet users that Respondent is affiliated with Complainant.
Respondent registered and used the <merrilllynchbofa.com> domain name in bad faith in an attempt to create a likelihood of confusion that Respondent is somehow affiliated with Complainant. Respondent also passively holds the disputed domain name and fails to make an active use of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the MERRILL LYNCH and BOFA marks prior to registration of the at-issue domain name due to the fame of the marks.
Respondent failed to submit a formal Response in this proceeding. However, in an email to the dispute resolution provider Respondent responds to the Written Notice of Complaint as follows: “can [sic] you tel [sic] me please how can i [sic] cancel that domain, I [sic] dont [sic] use it at all. Thak [sic] you.
Complainant has rights in the MERRILL LYNCH and BOFA marks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MERRILL LYNCH and BOFA trademarks.
Respondent, while holding the domain name passively, intends that the <merrilllynchbofa.com> domain name will be used to confuse recipients of emails from @merrilllynchbofa.com into believing that Respondent is affiliated with Complainant when it is not.
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 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”).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶4(a), when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is an express indication that Respondent desires to cancel its <merrilllynchbofa.com> domain name. Respondent claims via an email response to the dispute resolution provider that it would like to cancel the at-issue domain name because it does not use it. Canceling Respondent’s domain name registration will effectively transfer the domain name back into the pool of publically available names. Furthermore, Complainant through its counsel states in no uncertain terms that it desires that the at-issue domain name be transferred to Complainant. While both parties agree that Respondent should be divested of the <merrilllynchbofa.com> domain name, the parties are not in agreement as to the domain name’s ultimate disposition. Therefore, since there is no evidence of an unequivocal Complainant-Respondent agreement that the domain name should be transferred from Respondent to Complainant, the instant dispute will be decided in light of Policy ¶ 4(a) considerations.
The at-issue domain name is confusingly similar to trademarks in which Complainant has rights.
Complainant’s USPTO trademark registrations for both MERRILL LYNCH and BOFA shows Complainant’s rights in these marks under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <merrilllynchbofa.com> domain name contains Complainant’s MERRILL LYNCH trademark less its domain name impermissible spaces, followed by Complainant’s BOFA trademark with all followed by the top-level domain name “.com”. The differences between Complainant’s trademarks and Respondent’s domain name fail to distinguish the domain name from Complainant’s marks for the purpose of Policy ¶ 4(a)(i). The Panel thus concludes that Respondent’s <merrilllynchbofa.com> domain name is confusingly similar to Complainant’s MERRILL LYNCH and BOFA trademarks. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of a complainant’s marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Here, Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Arturo Torres sato.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <merrilllynchbofa.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <merrilllynchbofa.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent’s domain name has been setup with an email enabling MX record. Respondent likely uses or intends to use email addresses hosted by the <merrilllynchbofa.com> domain name, taking the general form firstname.lastname@example.org, to confuse internet users into believing they are dealing with Complainant’s when they are not. Respondent’s likely intent to use email from the at-issue domain name to pass itself off as Complainant is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent registered and uses the at-issue domain name with the likely intent to pass itself off as Complainant via email hosted at <merrilllynchbofa.com>. Respondent’s intended use of the at-issue domain name to confusion third parties into believing the at-issue domain name is affiliated with Complainant when it is not, is evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Next, Respondent fails to make an active use of the <merrilllynchbofa.com> domain name. Browsing to the domain name results in the browser’s user being presented with a “404 error” indicating that a webpage cannot be accessed. Further Respondent, in its email response, acknowledges that the <merrilllynchbofa.com> domain name is not used. Respondent’s passive holding of the at-issue domain name by failing to use it to support substantive content suggests that Respondent’s domain name was registered and used in bad faith pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”)
Finally, Respondent had actual knowledge of Complainant’s rights in its MERRILL LYNCH and BOFA marks when it registered <merrilllynchbofa.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s registration of a domain name containing multiple trademarks owned by Complainant. Respondent’s registration of the at-issue domain name while having knowledge of Complainant’s rights therein shows Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrilllynchbofa.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 3, 2019
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