WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank of America Corporation v. Michael Strong
Case No. D2013-1417
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 Michael Strong of Whitby, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <merrill-edge-financial-services.com> is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2013. On August 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 19, 2013, the Complainant filed an amendment to the Complaint to correct the Mutual Jurisdiction section in the Complaint.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2013.
The Center appointed Adam Taylor as the sole panelist in this matter on September 16, 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 July 10, 2013.
As of September 8, 2013, the Respondent used the disputed domain name for a website branded “Merrill edge financial services” offering financial services including loan products.
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 term “financial-services” 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 term “financial-services”, is related to the Complainant.
Rights or Legitimate Interests
The Respondent cannot establish any rights or legitimate interests 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.
Moreover, in light of the many similarities between the website at the disputed domain name and the website at the domain name <merrilledgefinancial.com> and the fact that Respondent registered the disputed domain name immediately after the Complainant submitted its UDRP Complaint relating to <merrilledgefinancial.com> and had the website at that domain name removed, it is clear that the Respondent is the same as the registrant of record for the domain name <merrilledgefinancial.com > and only registered and used the disputed domain name to continue the scheme previously carried out at the website at “www.merrilledgefinancial.com”. Specifically, the Respondent is attempting to confuse consumers into believing that his services are related to the Complainant’s, so that he can attempt to impermissibly extract funds from those confused consumers. In that other UDRP case, the Complainant provided evidence of two instances of actual confusion, one of which resulted in one of the Complainant’s customers sending USD 5,000.00 to the Respondent and being unable to retrieve his money after learning that the Respondent was not related to the Complainant.
Additionally, the Respondent is also probably using the disputed domain name to confuse consumers into providing the Respondent with certain valuable personal information. The Respondent’s webpages request that users apply for the Respondent’s services by providing a variety of personal financial information. The Respondent’s use of the disputed domain name for this purpose is far from legitimate and indeed would constitute use in bad faith.
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 register 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. This is the second time that the Respondent has registered and used a domain name based on the Complainant’s MERRILL EDGE marks for websites offering allegedly competing financial services. The Respondent has also used the disputed domain name to harvest sensitive personal information.
Further, the Respondent concealed its address and contact information by using fictitious 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 MERIILL 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 services” is insufficient to avert a finding of confusing similarity, as is the insertion of hyphens between the various words comprised in the disputed domain name.
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 paragraph 4(c)(ii) or (iii) of the Policy may apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of the Respondent’s 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 very likely that the Respondent is the controller of a similar domain name, <merrilledgefinancial.com>, which was also the subject of a UDRP complaint by the Complainant, also adjudicated upon by this Panel. See Bank of America Corporation v. null / Contact Privacy Inc. Customer 0134904339, WIPO Case No. D2013-1246. The Panel notes in particular that the disputed domain name was registered at around the same time that the Complainant filed the <merrilledgefinancial.com> complaint, that the websites at the respective domain names were very similar and that virtually identical registrant postal addresses were used in each case.
In that previous UDRP case, the Panel concluded that <merrilledgefinancial.com> had been registered and used in bad faith. The Panel found that the purpose of the website at that 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.
In the circumstances, the Panel has little difficulty concluding that the disputed domain name was registered and used for the continuance of the same illicit scheme.
Accordingly, in the Panel’s view, the Respondent has registered and is using 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 <merrill-edge-financial-services.com>, be transferred to the Complainant.
Date: September 25, 2013