WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bank of America Corporation v. Domains By Proxy, LLC / Peter Smith

Case No. D2016-1223

1. The Parties

The Complainant is Bank of America Corporation of Charlotte, North Carolina, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Peter Smith of Isle of Man, the Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <bankofasmericas.com>, <bankofaqmericaq.com>, <bankpdfamerica.com>, <baqnkofamericaq.com>, <basnkofamericas.com>, <basnkofasmerica.com>, <boabcan.com>, <boascapital.com>, <mereilledge.com>, <mererilledge.com>, <merirlledge.com>, <merreilledge.com>, <merrikledge.com>, <merriklledge.com>, <merrileldge.com>, <merrilkedge.com>, <merrilkledge.com>, <merrilledeg.com>, <merrilledfe.com>, <merrilledfge.com>, <merrilledger.com>, <merrilledgew.com>, <merrilledgfe.com>, <merrilledghe.com>, <merrilledgr.com>, <merrilledgre.com>, <merrilledgw.com>, <merrilledgwe.com>, <merrilledhe.com>, <merrilledhge.com>, <merrilledsge.com>, <merrillefdge.com>, <merrillefge.com>, <merrillegde.com>, <merrillerdge.com>, <merrillesdge.com>, <merrillesge.com>, <merrillewdge.com>, <merrillkedge.com>, <merrillredge.com>, <merrillwedge.com>, <merriolledge.com>, <merriulledge.com>, <merrliledge.com>, <merroilledge.com>, <merrolledge.com>, <merrtilledge.com>, <merruilledge.com>, <merrulledge.com>, <mertilledge.com>, <mertrilledge.com>, <metrilledge.com>, <metrrilledge.com>, <mewrrilledge.com>, <mmerrilledge.com>, <mnerrilledge.com>, <mwerrilledge.com>, <mwrilledge.com>, and <nerrilledge.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2016.

The Center appointed Assen Alexiev as the sole panelist in this matter on August 3, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, Bank of America Corporation, 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. It is the largest bank holding company in the United States by assets, and the second largest bank by market capitalization. With approximately 242,000 employees, the Complainant serves clients in over 150 countries through operations in 40 countries. In the United States, the Complainant serves 49 million consumers and small businesses through approximately 5,000 retail banking offices. In a 2016 ranking of the world’s biggest public companies by Forbes.com, Bank of America was ranked 11th out of the largest 100 companies in the world. In 2016, Forbes listed Bank of America as the 68th most valuable brand in the world, and the 8th most valuable for financial services, with brand revenue of USD 74.1 billion and brand value of USD 8.3 billion.

The Complainant has used the name “Bank Of America” since 1928, and is also commonly known and referred to by consumers and the trade by the short form identifiers “BOA” and “BOFA.”

In 2009, the Complainant acquired Merrill Lynch & Co. Inc. (“Merrill Lynch”). For decades, Merrill Lynch has been known worldwide as a leading wealth management, capital markets and advisory company, with offices in countries around the globe. Following the acquisition of Merrill Lynch, the Complainant became the largest brokerage company in the world. Through Bank of America Merrill Lynch’s Global Banking and Markets platform it serves clients that include 98 percent of the U.S. Fortune 100 companies and 85 percent of the global Fortune 500 companies.

The MERRILL LYNCH name was first used in 1915 when Charles E. Merrill & Co. and Edmund C. Lynch joined to form Merrill Lynch & Co. in New York City. While the company’s original business was primarily focused on brokerage services and underwriting in the United States, the company grew into a large multinational corporation that offered a broad range of global services to private clients, small businesses, institutions and organizations. In 2015, Brand Finance released a report entitled Banking 500 2015, in which the MERRILL LYNCH brand was listed as the 64th most valuable banking / financial brand in the world. Since 2010, the Complainant has also operated a popular online brokerage service known as MERRILL EDGE which provides consumers with access to a full range of investments and independent research.

The Complainant owns a number of trademark registrations for BANK OF AMERICA and MERRILL EDGE (the “Trademarks”). The registrations for BANK OF AMERICA (the “BANK OF AMERICA trademark”) include:

- The word trademark BANK OF AMERICA with registration No. 0853860, registered on July 30, 1968 in the United States for services in International Classes 35 and 36;

- The word trademark BANK OF AMERICA with registration No. 2713720, registered on May 6, 2003 in the United States for goods and services in International Classes 9, 16, 35, 36 and 38;

- The word trademark BANK OF AMERICA with registration No. 000118588, registered on April 20, 1998 as a European Union trademark for goods and services in International Classes 9, 16 and 36; and

- The word trademark BANK OF AMERICA with registration No. 000944009, registered on November 16, 2000 as a European Union trademark for goods and services in International Classes 9, 16, 35, 36 and 38.

The trademark registrations for MERRILL EDGE (the “MERRILL EDGE trademark”) include:

- The word trademark MERRILL EDGE with registration No. 3862105, registered on October 12, 2010 in the United States for services in International Class 36;

- The word trademark MERRILL EDGE with registration No. 1061044, registered on July 27, 2010 as a European Union trademark for services in International Class 36; and

- The word trademark MERRILL EDGE with registration No. UK00002546407, registered on October 8, 2010 in the United Kingdom of Great Britain and Northern Ireland for services in International Class 36.

The Complainant and its subsidiary Merrill Lynch own and use in connection with their financial services the domain names <bankofamerica.com>, <merrilllynch.com>, <bankofamericamerrilllynch.com> and <merrilledge.com>.

The disputed domain names were registered on June 17, 2016, except the disputed domain names <mnerrilledge.com>, <mnerrilledge.com>, <merrtilledge.com>, <mwrilledge.com>, <merruilledge.com>, <merriolledge.com>, <merrulledge.com>, <merroilledge.com>, <metrrilledge.com>, <merriulledge.com>, <merrikledge.com>, <merrilkledge.com> and <merrilkedge.com>, which were registered on April 9, 2016, and the disputed domain name <boabcan.com>, which was registered on March 4, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant contends that as a result of its activities, the Trademarks have acquired public recognition and distinctiveness in the financial industry and amongst consumers of financial products and services as symbols of the source of the products and services offered by the Complainant, and that the Trademarks embody valuable reputation and goodwill belonging exclusively to the Complainant.

The Complainant contends that the disputed domain names are confusingly similar to the Trademarks because they are misspellings or “typo” domain names based on the Trademarks. Fifty one of the disputed domain names are based on the MERRILL EDGE trademark, six of the disputed domain names - on the BANK OF AMERICA trademark, and two - on the BOFA and BOA trademark. The Respondent’s misspelling of the Trademarks to create the disputed domain names is an insignificant distinction that does not remove the confusing similarity. Given the notoriety of the Trademarks, consumers will reasonably believe that the disputed domain names are related to the Complainant. Internet users who search the Internet for information concerning the Complainant or its financial products and services and happen to misspell or mistype the Trademarks are likely to be misdirected to the disputed domain names and to believe that they are accessing a website connected to or authorized by the Complainant, thereby creating a likelihood of confusion.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant’s extensive use of the Trademarks predates the registration and first use of the disputed domain names. The disputed domain names are not a legitimate name or nickname of the Respondent. There is no relationship between the Complainant and the Respondent giving rise to any license or permission by which the Respondent could own or use any domain name incorporating or imitating the Trademarks. The Complainant does not sponsor or endorse the Respondent’s activities in any respect and has not provided its consent to the Respondent’s use and exploitation of the Trademarks in the disputed domain names. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain names. The Respondent has used the disputed domain names to redirect Internet users to his own websites to offer them competing financial services. The Respondent has registered and used dozens of other domain names incorporating trademarks of third parties, and panels have found in a number of UDRP proceedings that the Respondent had no legitimate interest in these domain names.

The Complainant submits that the Respondent has registered and used the disputed domain names in bad faith for commercial gain and to benefit from the goodwill and reputation associated with the Trademarks. The Respondent has registered the disputed domain names years after the Trademarks became well known, so the Respondent was and is fully aware of the Complainant’s rights in the Trademarks when he registered the disputed domain names, all of which are misspellings of the Trademarks. The Complainant submits that all disputed domain names are being used in the same manner and redirect or have redirected to the websites at “www.marketsworld.com” or “www.licensedbinaryoptions.com”, which websites are owned or controlled by the Respondent, and which offer competing financial services.

According to the Complainant, the Respondent is a known cybersquatter with an established pattern of registering domain names based on the marks and names of others and using them for profit. The Respondent has been found to have acted in bad faith by registering numerous misspelled domain names based on the marks of financial institutions and using them to redirect web traffic to the Respondent’s website at “www.marketsworld.com” which offers financial services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name[…]”. In the event of a default, under the Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate”.

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent”. As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the BANK OF AMERICA trademark and the MERRILL EDGE trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the gTLD part of the disputed domain names.

In view of the above, the relevant sections of the disputed domain names <bankofasmericas.com>, <bankofaqmericaq.com>, <bankpdfamerica.com>, <baqnkofamericaq.com>, <basnkofamericas.com>, <basnkofasmerica.com> are their “bankofasmericas”, “bankofaqmericaq”, “bankpdfamerica”, “baqnkofamericaq”, “basnkofamericas” and “basnkofasmerica” elements. All of these elements are obvious misspellings of the BANK OF AMERICA trademark and clearly relate to it. Therefore, the Panel finds that these disputed domain names are confusingly similar to the BANK OF AMERICA trademark, in which the Complainant has rights.

The relevant sections of the disputed domain names <mereilledge.com>, <mererilledge.com>, <merirlledge.com>, <merreilledge.com>, <merrikledge.com>, <merriklledge.com>, <merrileldge.com>, <merrilkedge.com>, <merrilkledge.com>, <merrilledeg.com>, <merrilledfe.com>, <merrilledfge.com>, <merrilledger.com>, <merrilledgew.com>, <merrilledgfe.com>, <merrilledghe.com>, <merrilledgr.com>, <merrilledgre.com>, <merrilledgw.com>, <merrilledgwe.com>, <merrilledhe.com>, <merrilledhge.com>, <merrilledsge.com>, <merrillefdge.com>, <merrillefge.com>, <merrillegde.com>, <merrillerdge.com>, <merrillesdge.com>, <merrillesge.com>, <merrillewdge.com>, <merrillkedge.com>, <merrillredge.com>, <merrillwedge.com>, <merriolledge.com>, <merriulledge.com>, <merrliledge.com>, <merroilledge.com>, <merrolledge.com>, <merrtilledge.com>, <merruilledge.com>, <merrulledge.com>, <mertilledge.com>, <mertrilledge.com>, <metrilledge.com>, <metrrilledge.com>, <mewrrilledge.com>, <mmerrilledge.com>, <mnerrilledge.com>, <mwerrilledge.com>, <mwrilledge.com>, and <nerrilledge.com> are all misspellings of the MERRILL EDGE trademark of the Complainant and are confusingly similar to it. Therefore, the Panel finds that these disputed domain names are confusingly similar to the MERRILL EDGE trademark in which the Complainant has rights.

The Complainant has also contended that it is also known as and referred to by consumers by the short form identifier “BOA” and that the disputed domain names <boabcan.com> and <boascapital.com> are confusingly similar to the sign “BOA”. The question here is whether the Complainant has common law trademark rights over this identifier. As discussed in S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394, a common law trademark is “a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.”Having reviewed the evidence in the case file and the contentions of the Complainant and taken into account the silence of the Respondent on this issue, the Panel finds that the Complainant has established that it has common law trademark rights in the sign “BOA” for the purposes of the Policy. The Complainant has submitted evidence for the widespread use of this sign for the identification of the Complainant by third parties and has established that is has reputation and goodwill in respect of this sign. The relevant elements of the disputed domain names <boabcan.com> and <boascapital.com> are their “boabcan” and “boascapital” elements. These elements incorporate the sign “BOA” in their beginning, which makes them confusingly similar to this sign and their use by the Respondent is more likely than not to deceive consumers. This in turn may cause damage to the Complainant as consumers seeking the services of the Complainant could be diverted to a competitor of the Complainant.

It is undisputed and accepted practice under the Policy that a complaint may be based on unregistered trademarks or common law trademarks. See The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050. Therefore, the Panel finds that the disputed domain names <boabcan.com> and <boascapital.com> are confusingly similar to the sign “BOA” in which the Complainant has common law trademark rights and that the Complainant has satisfied the first element of the test under paragraph 4(a) of the Policy in respect of these two disputed domain names.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not commonly known by any of the Trademarks, has not been authorized by the Complainant to use the Trademarks, and has not carried out a legitimate noncommercial activity with the disputed domain names. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

There is no evidence in the case file that the Respondent is commonly known by any of the disputed domain names, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.

The disputed domain names represent different variants of misspellings of the distinctive BANK OF AMERICA and MERRILL EDGE trademarks used by the Complainant or incorporate the sign “BOA” in which the Complainant has common law trademark rights. This satisfies the Panel that the Respondent must have been aware of the Trademarks when he registered the disputed domain names, and that he targeted the Trademarks when he chose what domain names to register. The websites associated to the disputed domain names offer to Internet users financial services that compete with the Complainant’s services and have no relation to the Trademarks. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests of the Respondent. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The facts of this case show that the disputed domain names were registered with knowledge of the Trademarks. The disputed domain names are all misspellings of the BANK OF AMERICA trademark or the MERRILL EDGE trademark of the Complainant or incorporate the sign “BOA” in which the Complainant has common law trademark rights. The disputed domain names are associated to two websites of the Respondent which offer competing financial services. In the absence of any denial or allegation to the contrary by the Respondent, the Panel is prepared to accept the Complainant’s contentions that, by registering and using the disputed domain names, the Respondent has intentionally attempted to exploit the goodwill of the Complainant’s Trademarks to attract, for commercial gain, Internet users to the websites associated to the disputed domain names. This conduct of the Respondent supports a finding that the disputed domain names have been registered and are being used in bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <bankofaqmericaq.com>, <bankofasmericas.com>, <bankpdfamerica.com>, <baqnkofamericaq.com>, <basnkofamericas.com>, <basnkofasmerica.com>, <boabcan.com>, <boascapital.com>, <mereilledge.com>, <mererilledge.com>, <merirlledge.com>, <merreilledge.com>, <merrikledge.com>, <merriklledge.com>, <merrileldge.com>, <merrilkedge.com>, <merrilkledge.com>, <merrilledeg.com>, <merrilledfe.com>, <merrilledfge.com>, <merrilledger.com>, <merrilledgew.com>, <merrilledgfe.com>, <merrilledghe.com>, <merrilledgr.com>, <merrilledgre.com>, <merrilledgw.com>, <merrilledgwe.com>, <merrilledhe.com>, <merrilledhge.com>, <merrilledsge.com>, <merrillefdge.com>, <merrillefge.com>, <merrillegde.com>, <merrillerdge.com>, <merrillesdge.com>, <merrillesge.com>, <merrillewdge.com>, <merrillkedge.com>, <merrillredge.com>, <merrillwedge.com>, <merriolledge.com>, <merriulledge.com>, <merrliledge.com>, <merroilledge.com>, <merrolledge.com>, <merrtilledge.com>, <merruilledge.com>, <merrulledge.com>, <mertilledge.com>, <mertrilledge.com>, <metrilledge.com>, <metrrilledge.com>, <mewrrilledge.com>, <mmerrilledge.com>, <mnerrilledge.com>, <mwerrilledge.com>, <mwrilledge.com>, and <nerrilledge.com>, be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: August 27, 2016