National Arbitration Forum
DECISION
Bank of America Corporation
and Merrill Lynch & Co., Inc. v. Webadviso
Claim Number: FA0903001254121
PARTIES
Complainant is Bank of America Corporation and Merrill
Lynch & Co., Inc. (“Complainant”),
represented by Melissa G. Ferrario, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bofaml.com>, <mlbofa.com>,<bofamerrill.com>, and <merrillbofa.com>,
registered with Godaddy.com, Inc.
PANEL
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 25, 2009; the
National Arbitration Forum received a hard copy of the Complaint on March 25, 2009.
On April 2, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <bofaml.com>, <mlbofa.com>, <bofamerrill.com>, and <merrillbofa.com> domain
names are registered with Godaddy.com, Inc.
and that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On April 7, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 27, 2009 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@bofaml.com, postmaster@mlbofa.com, postmaster@bofamerrill.com,
and postmaster@merrillbofa.com by
e-mail.
A Response was received on April 28, 2009 and was deemed deficient
pursuant to ICANN Rule 5 since it was received after the Response deadline.
On May 2, 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Debrett G. Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights and states
that the disputed domain names are confusingly similar to one or more of the
trademarks.
Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered
and used the disputed domain names in bad faith.
The detail of the Complaint is included where
necessary in the Discussion which follows.
B. Respondent
Respondent states that it “is a ‘domainer’
group where the group looks to acquire high value domain names and park them
with domain parking service providers to generate pay-per-click revenue.”
Respondent states that it “would like to point
out that the Complainant filed their complaint after the fact they re-branded
their corporate and investment banking unit to Bank of America Merrill Lynch as
a result of the merger between Bank of America on Jan. 13, 2009 and Merrill
Lynch finalized on Jan. 1, 2009.”
Respondent adds that it “registered the at-issue domains before the
official announcement of the merger between Bank of America and Merrill Lynch
which was announced on the morning of business day Monday Sept., 15. 2008.”
Respondent states further that the disputed
domain names “are either to contain incorrect English alphabet abbreviations of
their full corporate names or contain generic short 2-letter initials or have a
generic word in common with their full corporate names.”
Respondent purports to have adopted the domain
names “because BOFA stands for two highly regarded Chinese characters meaning
treasure (寶 pronounce “bo” in
Cantonese) and rich (發 pronounce “fa” or
“fat” in Cantonese).”
FINDINGS
1. Bank of America
Corporation (“BOAC”) is one of the world’s largest financial establishments.
2. Merrill Lynch & Co.
Inc. (“Merrill Lynch”) is one of the world's leading financial management and
advisory companies.
3. On September 14, 2008
BOAC announced its agreement to purchase Merrill Lynch.
4. Merrill Lynch is now
a wholly-owned subsidiary of BOAC.
5. Respondent is, by its
own admission, a dealer in domain names.
6. Respondent registered
all four disputed domain names on September 14, 2008.
DISCUSSION
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 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Preliminary Issue: Deficient
Response
Response was submitted in a timely manner but only in electronic format
and is therefore deficient in terms of Rule 5.
Accordingly, the Panel has discretion whether or not to accept and
consider the Response. See
Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003)
(holding that the respondent’s failure to submit a hard copy of the response
and its failure to include any evidence to support a finding in its favor
placed the respondent in a de facto default posture, permitting the
panel to draw all appropriate inferences stated in the complaint). But see
J.W. Spear & Sons PLC v. Fun
League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding
that where the respondent submitted a timely response electronically, but
failed to submit a hard copy of the response on time, “[t]he Panel is of the
view that given the technical nature of the breach and the need to resolve the
real dispute between the parties that this submission should be allowed and
given due weight”).
In the exercise of its discretion, the Panel has in this case accepted
and considered the Response in spite of non-compliance with the Rules.
Identical and/or Confusingly
Similar
Paragraph 4(a)(i) of the Policy requires
Complainant to show rights in the claimed trademarks and to show that the disputed
domain names are at least confusing similarity to one or more of those
trademarks.
The Policy does not distinguish between
registered and unregistered trademark rights however a trademark registered
with a national authority is prima facie
evidence of trademark rights for the purposes of the Policy.
BOAC is the owner, inter alia, of United States Federal Reg. No. 847,761 for the
trademark, “B OF A”, issued April 16, 1968.
Merrill Lynch is the owner, inter alia, of United States Federal
Reg. No. 1,280,908 for the trademark ,“MERRILL LYNCH”, issued June 5, 1984,
plus a number of other trademarks which combine the letters “ML” with
descriptors, for example, “MLCONNECT”
(Reg. No. 2,683,016 issued February 4, 2003), “ML MOBILE” (Reg. No. 2,715,363
issued May 13, 2003), and “ML MARKETS” (Reg. No. 2,891,727 issued October 5,
2004).
Complainant argues that <bofaml.com>, <mlbofa.com>, <bofamerrill.com>, and <merrillbofa.com> are confusingly
similar to Complainant’s registered marks.
It is widely accepted that the addition of a
gTLD such as “.com” is trivial and will not of itself prevent a finding of
confusing similarity in the comparison of a certain trademark and domain name.
Stripped of their gTLDs, the Panel finds that the names “bofaml” and
“mlbofa” are confusingly similar to the trademark “B OF A” simply because those
four letters form the substantive part of those domain names.
The Panel does not consider that “bofamerrill” or “merrillbofa” is
confusingly similar to any of the registered trademarks. The joinder of BOAC and Merrill Lynch as
co-complainants does not entail the creation of rights in portmanteau trademark
combinations such as “B OF A MERRILL LYNCH” or “MERRILL LYNCH B OF A”. The registered trademarks continue to have
their own separate proprietorship and, by reason only of the joining of the
parties in these proceedings, there are no new rights created in combinations
of the registered marks .
Unregistered trademark rights might accrue through use however there is
nothing in the Complaint to suggest that since the time of the acquisition of
Merrill Lynch by BOAC, there has been use of combination trademarks which might
so qualify.
Accordingly the Panel finds that Complainant has established paragraph
4(a)(i) of the Policy in relation to <bofaml.com>
and <mlbofa.com>, but has failed to do so in relation to <bofamerrill.com> and <merrillbofa.com>. As such, the ongoing analysis specifically
relates only to the two former domain names.
Rights or Legitimate Interests
Complainant has the burden to establish that Respondent has no rights
or legitimate interests in the domain name.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate rights
or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
D2000‑0624 (WIPO
The Policy states that any of the following
circumstances, in particular but without limitation, if found by the Panel to
be proved based on its evaluation of all evidence presented, shall demonstrate
rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of
the dispute, your use of, or demonstrable preparations to use, the domain name
or a name corresponding to the domain name in connection with a bona fide
offering of goods or services; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
The WHOIS data does not support any argument that Respondent might be
commonly known by the disputed domain names. There is no evidence that Respondent has any
trademark rights. Complainant has stated
there to be no relationship between it and Respondent and there is no evidence
of use or intention to use the domain names in relation to a bona fide
offering of goods or services.
The Panel finds that Complainant has established a prima facie
case that Respondent lacks rights or legitimate interests in the disputed
domain name.
In Response, it is argued that the domain names were registered before
announcement of the acquisition of Merrill Lynch by BOAC. On the evidence, that appears to be
inaccurate since there is news material in the Complaint reporting on the
acquisition and dated September 14, 2008, the same day that the domain names
were registered.
Respondent also argues that the disputed domain names are composed of
commonplace letters and a known name over which Complainant has no exclusive
rights. Respondent purports to have adopted the term
“bo fa” because of the favourable meaning of those terms in Cantonese. Whether that claim be true or false, it fails
to explain why all four names were registered on the day of the announcement of
the Merrill Lynch acquisition or why the names also include the word “merrill”
or the initials “ml”.
Finally, Respondent states that it has a
legitimate business built on the registration of “high value” generic domain
names. The Panel has no issue with the
claim that a bona fide business can
exist which does no more than trade in generic domain names which do not
impinge on third party trademark rights, but the strict question here is
whether Respondent has rights or a legitimate interest in the domain names <bofaml.com> and <mlbofa.com>.
The Panel has already found those domain names to be confusingly
similar to Complainant’s trademark.
Respondent admits that it is using the disputed domain names to earn
click-through fees. The Panel finds that
Respondent has not made a bona fide
offering of goods or services under paragraph 4(c)(i), nor a legitimate
noncommercial or fair use under paragraph 4(c)(iii). See
Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)
(holding that the operation of a pay-per-click website at a confusingly similar
domain name was not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii)); Constellation
Wines
The Panel finds that Respondent has no rights or legitimate interests
in the domain name and so Complainant has satisfied the second limb of the
Policy.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy
sets out the circumstances which shall be evidence of the registration and use
of a domain name in bad faith. They are:
(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
website 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.
What is noteworthy about Paragraphs 4(b)(i)-(iv) is that they are all
cases of both registration and use in bad faith. In this case, Complainant alleges that
Respondent’s actions fall under Paragraphs 4(b)(i), (iii) and (iv). Complainant also argues that the evidence
shows that Respondent both registered and used the domain names in bad faith.
The Panel finds on a balance of the evidence
that Respondent registered the domain names opportunistically in the knowledge
of the publicized acquisition of Merrill Lynch by BOAC. The domain names were subsequently offered
for sale and used in connection with “link farms” promoting the goods and
services of third parties having no connection with Complainant.
The Panel has no occasion in this case to turn
to an assessment of whether or not the actions of Complainant also fall into
one or more of the scenarios outlined in paragraph 4(b) of the Policy since it
is satisfied that Respondent registered and then used the domain names in bad
faith for the reasons just given.
Complainant has satisfied the third and final
limb of the Policy.
DECISION
Accordingly, it is Ordered that the domain
names <bofaml.com> and <mlbofa.com>
be TRANSFERRED from Respondent to Complainant.
Having failed to establish at least one of
the three elements required under the Policy in relation to the domain names <bofamerrill.com> and <merrillbofa.com>, the Panel
concludes that relief shall in those cases be DENIED.
Debrett G. Lyons, Panelist
Dated: May 15, 2009
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