WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Merrill Lynch & Co., Inc., v. Andrew Miller Case No. D2008-1496 1. The Parties
Complainant is Merrill Lynch & Co., Inc of New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
Respondent is Andrew Miller of Orem, Utah, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2008. On October 3, 2008, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain names. On October 6, 2008 and October 15, 2008, F transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 6, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on November 21, 2008. 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
Complainant is the owner of the world-famous MERRILL LYNCH mark and trade name. For over 90 years the MERRILL LYNCH name and mark has been continuously used to identify Complainant's financial services companies. Complainant is a leading wealth management, capital markets and advisory company, with offices in 38 countries and territories and total client assets of approximately USD1.7 trillion.
The MERRILL LYNCH mark was first used in 1915. Since 1982 Complainant's MERRILL LYNCH mark has been registered in numerous countries around the world, including, by way of example, the United States of America, the European Union, the People's Republic of China, Japan, Hong Kong SAR of China, India, the Republic of Korea, Canada, Australia, Brazil, the Cayman Islands Overseas Territory of the United Kingdom and Northern Ireland, Argentina, Colombia, Venezuela, Chile and South Africa.
Complainant has continuously owned and used numerous Internet domain names for active websites, including, for example, , , , and , which are used to provide information regarding Complainant and its services and to provide services to complainant's customers. Complainant also owns and uses a number of country specific domain names such as, by way of example, , , , , , and .
Respondent registered the disputed domain names on July 16, 2008. The disputed domain names resolve to parking websites offering links to a variety of financial services which compete with services offered by Complainant. 5. Parties' Contentions A. Complainant
Complainant asserts the disputed domain names are confusingly similar because each disputed name incorporates Complainants entire MERRILL LYNCH mark. Complainant asserts the use of its MERRILL LYNCH mark by Respondent is unauthorized and that Respondent has no rights or legitimate interest in the domain names. Complainant asserts the domain names were registered and are being used in bad faith to confuse Internet users and attract Internet users to Respondent's websites in an effort to sell or market competing financial services.
Complainant asserts that Respondent is a known cybersquatter with an established pattern of registering domain names based on the names and marks of well-known companies. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185. A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to Complainant's MERRILL LYNCH mark as they fully incorporate the MERRILL LYNCH mark. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). The mere addition of the generic term “bank” to the MERRILL LYNCH mark in the disputed domain names is of no import. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark). In addition, Respondent's use of “www” as a prefix before the MERRILL LYNCH mark in a domain name is an insignificant distinction that does not remove the confusing similarity, but rather serves to attract users to Respondent's website utilizing the disputed domain name. Deutsche Telekom AG v. Andrew Miller,WIPO Case No. D2008-0296. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by Respondent, shall be evidence of Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to Respondent, Respondent's use of, or demonstrable preparation to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods and services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names. As an initial matter, Respondent has not provided an explanation for its use of Complainant's mark. Next, Respondent's use of the domain names is not authorized. Respondent has never been a licensee of Complainant. Moreover, it is apparent that Respondent intends to utilize the disputed domains names for commercial gain. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In the absence of any such explanation from Respondent for its use of Complainant's mark or the disputed domain names, and where, as here, Complainant's mark and name are well-known, Respondent has no rights to or legitimate interests in the disputed domain names. Guerlain S.A. v. PeiKang,WIPO Case No. D2000-0055. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith and a lack of rights or legitimate interest found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain names; or
(ii) The Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other on-line locations, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or locations or of a product.
The Panel has no difficulty in concluding that the disputed domain names were registered and are being used in bad faith.
The disputed domain names fully incorporate Complainant's well-known MERRILL LYNCH mark, and were acquired long after the mark was registered and became well-known. PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No.D2002-0562, paragraph 6.12 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”). Respondent only could have registered the disputed domain names to capitalize on Complainant's goodwill. Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., supra at paragraph 6 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). The Panel concludes that the utilization of Complaint's MERRILL LYNCH mark by Respondent in the disputed domain names was not a matter of accident or caprice, but an intentional effort.
Respondent's bad faith registration and use is further established by the fact that Respondent has sought to profit commercially from the disputed domain names. Respondent's use of Complainant's MERRILL LYNCH mark to advertise websites that compete with Complainant's services is not a use in connection with bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Société des Hôtels Méridien v. LaPorte Holdings, Inc.,WIPO Case No. D2004-0849; Hilton Group plc v. Forum LLC,WIPO Case No. D2005-0244.
The Panel further finds that Respondent's pattern of cybersquatting further supports the unassailable conclusion that the domain names were registered and are being used in bad faith. Respondent has been found to have registered and used domain names in bad faith by prior UDRP panels. Deutsche Telekom AG v. Andrew Miller,WIPO Case No. D2008-0296 (Respondent found to have registered and used in bad faith 15 domains name based on the T-MOBILE and T-ONLINE marks); Advanta Corp. v. Andrew Miller, NAF Claim No. FA1213436 (Respondent found to have registered and used the domain name in bad faith). Such a pattern of is evidence of bad faith registration and use. Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584; Volvo Trademark Holding AB v. Michele Dinoia,WIPO Case No. D2004-0911. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to Complainant.
William F. Hamilton
Sole Panelist
Dated: December 5, 2008
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