Bank of America Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2007001904622
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2020; the Forum received payment on July 16, 2020.
On July 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2020 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@merrill-edge.com, postmaster@merriledgge.com, postmaster@merrileedge.com. Also, on July 24, 2020, 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 August 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Bank of America Corporation, is a financial institution that provides financial products and services. Complainant asserts rights in the MERRILL, MERRILL LYNCH, and MERRILL EDGE marks through the registration of the marks with many trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,080,884, registered on Jan. 3, 2012). Respondent’s <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names are confusingly similar to Complainant’s marks as the domain names incorporate the MERRILL and MERRILL EDGE marks in their entirety, merely featuring a misspelling of the marks.
Respondent lacks rights or legitimate interests in the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent’s use of any of the MERRILL marks. Additionally, Respondent fails to use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to direct Internet users to third party websites through hyperlinks for commercial gain. Additionally, Respondent’s registration of the domain names is an example of typosquatting, which is not a legitimate use of a Complainant’s mark.
Respondent registered and uses the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names in bad faith. Respondent attempts to sell all three of the disputed domain names. Respondent also has a history of a pattern of bad faith registration of domain names. Respondent intentionally targeted the MERRILL marks for financial gain. Respondent’s registration of the domain names is also an example of typosquatting. Lastly, Respondent had knowledge of Complainant’s rights to the marks at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bank of America Corporation (“Complainant”), of Charlotte, NC, USA. Complainant is the owner of domestic and international registrations for the marks MERRILL LYNCH, MERRILL EDGE, and MERRILL, along with variations thereof constituting the family of MERRILL marks. Complainant has been the owner of these marks since its purchase and takeover of operations of the Merrill Lynch company in 2009. Complainant operates Merrill Lynch branches and offices throughout the USA and operates various online brokerage and financial services known as Merrill Edge which is accessible by its <merrilledge.com> domain name along with several additional Merrill formative domains. MERILL LYNCH has been used continuously since its inception in 1915 in connection with brokerage services, underwriting, financial advising and related practices and the MERRILL registrations have consistently taken place globally over that time such as the one with the USPTO in 2012.
Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), of Panama City, Panama. Respondent’s registrar’s address is reflected as Scottsdale, AZ, USA. The panel notes that the disputed domain names were registered on or about October 21, 2019, May 18, 2020, and June 12, 2020.
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”).
Complainant asserts rights in the MERRILL marks through registration of the marks with multiple trademark agencies. Registration of a mark with multiple trademark agencies around the world is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 4,080,884, registered on Jan. 3, 2012). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names are confusingly similar to Complainant’s marks because the domain names incorporate the MERRILL and MERRILL EDGE marks in their entirety, merely featuring a misspelling of the marks. While not asserted by Complainant, the domain names also add the ".com" generic Top-Level Domain ("gTLD"). Misspelling a mark and adding a gTLD does not save a domain name from a finding of confusing similarity under Policy ¶ 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The domain names consist of misspellings of Complainant's MERRILL EDGE mark with the addition of the ".com" gTLD. The Panel here finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interest in the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent to use the MERRILL marks. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names shows that the registrant’s name is “Carolina Rodrigues / Fundacion Comercio” and nothing in the record indicates that Respondent is licensed to use Complainant’s marks or is known by the disputed domain names. The Panel here finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Additionally, Complainant claims Respondent fails to use the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain names to offer competing goods or services through third party hyperlinks. Where a respondent’s use of a disputed domain name is to offer for sale competing services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant argues that the hyperlinks on the disputed domain name’s website resolve to websites that compete with Complainant’s business and are for Respondent’s own gain. The Panel here finds that Respondent’s use of the domain names indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant also claims that the disputed domain names are examples of typosquatting, which itself shows that respondent lacks rights or legitimate interests in the disputed domain names. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). As previously noted, Complainant points out that the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names are examples of misspellings of Complainant’s MERRILL EDGE mark. The Panel here finds that the Respondent lacks rights and legitimate interests per Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent registered and uses the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names in bad faith as Respondent attempts to sell the domain names. Intent to sell the disputed domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Hard Rock Café International (USA), Inc. v. Gameday Tickets, FA1202001428106 (Forum Mar. 20, 2012) (finding that the respondent’s offer to sell the disputed domain name to the complainant is evidence that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i), regardless of that fact that Complainant made the first offer). Complainant provides screenshots of a website which appears to show the domain names for sale. The Panel here finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Additionally, Complainant claims that Respondent targeted the MERRILL marks for financial gain. Respondent’s use of Complainant’s well known mark along with an abbreviation that is connected to Complainant’s business signals an intent to deceive, which is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) Complainant argues that Respondent intentionally targeted the MERRILL marks to create a likelihood of confusion in order to attract Internet users familiar with Complainant for their own financial gain. The Panel here finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant further points to the registration of the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names being typosquatting as evidence of bad faith registration. Typosquatting is independent evidence of bad faith registration under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel here finds that Respondent is guilty of typosquatting and thus has registered and used the domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the MERRILL marks at the time of registration. Knowledge may be shown through a Respondent’s use of a mark and the notoriety of the mark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Here, Complainant provides numerous articles that show the notoriety of the MERRILL marks and Complainant’s business. Additionally, Complainant argues that the domain names show knowledge because they incorporate either the mark in its entirety or misspellings of the Complainant’s mark, and that Respondent uses the marks to offer links to competing services makes it clear that Respondent was aware of Complainant and Complainant’s Marks. The Panel here finds Respondent registered the domain names with actual knowledge of Complainant's trademark rights and in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <merrill-edge.com>, <merriledgge.com>, and <merrileedge.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 1, 2020
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