WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank of America Corporation v. null / Contact Privacy Inc. Customer 0134904339
Case No. D2013-1246
1. The Parties
The Complainant is Bank of America Corporation of Charlotte, North Carolina, United States of America (“US”), represented by Kilpatrick Townsend & Stockton LLP, US.
The Respondent is null / Contact Privacy Inc. Customer of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <merrilledgefinancial.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 26, 2013.
The Center verified that the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2013.
The Center appointed Adam Taylor as the sole panelist in this matter on September 12, 2013. 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 is one of the world’s largest financial institutions. In 2009, the Complainant acquired Merrill Lynch & Co Inc. (“Merrill Lynch”). Merrill Lynch, founded in 1915, has been internationally known as a leading wealth management, capital markets and advisory company for decades. For example, Merrill Lynch was included in Interbrand’s listing of the world’s top 100 brands from 2005 to 2008.
Since February 2010, the Complainant’s group has operated an online brokerage service under the name Merrill Edge via a website at “www.merrilledge.com”.
The Complainant owns a worldwide portfolio of registered trademarks comprising or including the term “Merrill Edge” including US trade mark no. 3862105 for MERRILL EDGE filed on January 27, 2010, in international class 36.
The disputed domain name was created on June 13, 2013.
As of July 8, 2013, the Respondent used the disputed domain name for a website branded “Merrill Edge Financial” offering financial services including loan products such as personal loans, debt consolidation loans, automobile loans, and other loan services.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is identical and/or confusingly similar to the Complainant’s trade mark. The disputed domain name wholly incorporates the Complainant’s trade mark. The addition of the word “financial” to the MERRILL EDGE mark is of no import. Given the fame of the Complainant’s marks, consumers will be confused and reasonably believe that the disputed domain name, which includes the aptly related word “financial”, is related to the Complainant.
The Respondent’s activities have crossed the threshold from creating a likelihood of confusion to creating actual confusion. At least two documented instances of actual confusion have occurred thus far (annex Y to the Complaint). One such instance resulted in one of Complainant’s customers sending US $5000.00 to the Respondent. Upon learning that there is no relationship between the Complainant and the Respondent, the customer has unsuccessfully attempted to retrieve his money.
Rights or Legitimate Interests
The Respondent cannot establish any rights or legitimate interest in the disputed domain name. The Respondent registered the disputed domain name long after the Complainant announced that it would be offering online brokerage services under the name “Merrill Edge” and after that mark became well-known. Where a complainant’s mark is so well-known and recognised, there can be no legitimate use by a respondent.
The Complainant has not licensed the Respondent to use its marks.
It is highly unlikely that the Respondent has ever been commonly known by the disputed domain name.
The Respondent is not making, and has never made, a legitimate, noncommercial, or fair use of the disputed domain name. Rather, the Respondent has used the disputed domain name for a website which falsely purported to provide financial services.
The only reason why the Respondent would have wanted to registered or use the disputed domain name was because it knew of the Complainant’s famous marks and wanted to take advantage of them.
Registered and Used in Bad Faith
The Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the disputed domain name wholly incorporates the Complainant’s exact mark and was registered after the mark became well-known.
It is also established by the fact that the Respondent has sought to profit in bad faith from the disputed domain name.
Further, the Respondent concealed its address and contact information by using a proxy service with fictitious underlying contact and address information. This is further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark MERRILL EDGE by virtue of its registered trademarks as well as unregistered trade mark rights deriving from the extensive use of that name.
The Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraph 1.2 and paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the addition of the descriptive term “financial” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
“… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
Indeed, not only has the Respondent used the disputed domain name in connection with financial services, the same industry as the Complainant, there is evidence that the purpose of the website at the disputed domain name was to impersonate the Complainant for fraudulent purposes and that at least one customer was induced to send money to the Respondent thinking that it was connected with the Complainant.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 name <merrilledgefinancial.com>, be transferred to the Complainant.
Date: September 26, 2013