The Complainant is Bank of America Corporation of Charlotte, North Carolina, the United States of America, represented by Kilpatrick Stockton, LLP, the United States of America.
The Respondent is Yan Wei of Shanghai, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Guangzhou Ming Yang Information Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 3, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 8, 2010, 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 December 8, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 11, 2010, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the specified due date.
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 the Respondent of the Complaint, and the proceedings commenced on December 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 14, 2011. 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 and was ranked the largest American corporation by Fortune magazine in 2010. It is the fifth in terms of revenue on the list of Fortune 500 companies in the United States. The Complainant was also listed as the most admired company in the world in the megabanks industry.
In 2009, the Complainant acquired Merrill Lynch & Co, Inc, which is a leading wealth management, capital markets and advisory company with offices worldwide. The MERRILL LYNCH trade mark was first used in 1915. The MERRILL LYNCH trade mark and its short form MERRILL has been used for over 90 years. The Merrill Lynch brand was estimated at over USD 14 billion in 2007 by Business Week and Interbrand, and remained among the top 100 worldwide brands in terms of value. The Complainant continues to use the MERRILL LYNCH trade mark after the acquisition.
The Complainant owns registrations for trade marks incorporating MERRILL including the following: Jurisdiction Trade Mark Trade Mark No Registration Date
United States MERRILL LYNCH 1,272,653 April 3, 1984
United States MERRILL POINTS 3,401,096 March 25, 2008
United States MERRILL INVEST 3,490,012 August 19, 2008
United States MERRILL+ 2,993,782 September 13, 2005
United States (800) MERRILL 3,524,162 October 28, 2008
European Union MERRILL LYNCH 000029280 February 2, 1998
European Union MERRILL 007028392 May 11, 2009
P.R. China MERRILL LYNCH 4618706 January 7, 2009
P.R. China MERRILL 6816077 May 7, 2010
Hong Kong, MERRILL LYNCH 199806702 March 2, 1992
SAR of P.R. China
Hong Kong, MERRILL 301151883 July 2, 2008
SAP of P.R. China
The Complainant publicly announced around February 2010 its plans to operate online brokerage services under the name Merrill Edge and would do so at a website under the domain name . The announcement was widely publicized. The Complainant also applied to register MERRILL EDGE as a trade mark in the United States on January 27, 2010, and obtained such registration on October 12, 2010. Similar trade mark applications in other countries were filed within the same period some of which have matured to registration.
The Complainant, through its subsidiary, also owns domain name registrations incorporating the trade marks MERRILY LYNCH and/or MERRILL, including , , , , and . The Complainant, though its subsidiary, has also registered domain names which are typographical misspellings of , including , , which redirect to .
The Disputed Domain Name was registered on June 15, 2010 and resolves to a parking webpage which offers links to competitors of the Complainant. The parking webpage contains a header stating that the disputed domain name may be for sale, and contains a statement “This page is provided to the domain name owner by Sedo’s Domain Parking”. Little else is known about the Respondent beyond the WhoIs record of the Disputed Domain Name although it is noted that according to the information provided by the Complainant the Respondent’s name was associated with 668 other domain names and the Respondent’s email address was associated with 4,966 other domain names at the time the Complaint was filed. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s trade marks MERRILL EDGE, MERRILL and MERRILL LYNCH. The Disputed Domain Name differs from the trade mark MERRILL EDGE by the omission of one “r” and incorporates a common misspelling of the Complainant’s well-known MERRILL trade mark. The omission of the “r” is an insignificant distinction that does not remove the confusing similarity;
2) The Respondent has no legitimate interest in the Disputed Domain Name. There is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the MERRILL EDGE or MERRILL trade marks. The Complainant did not authorize the use of the MERRILL EDGE mark by the Respondent. The Respondent is not commonly known by the Disputed Domain Name. The Respondent has never made any legitimate, noncommercial or fair use of the Disputed Domain Name; and
3) The Respondent registered and is using the Disputed Domain Name in bad faith for commercial gain via Sedo’s domain parking programme and to profit from consumer confusion that the Disputed Domain Name is connected with the Complainant. The Respondent registered the Disputed Domain Name after the Complainant’s announcement of the launch of its Merrill Edge online brokerage service. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Since the language of the registration agreement of the Disputed Domain Name is Chinese, the default language of the proceeding is Chinese. However, taking into account the following circumstances and exercising the prerogatives given pursuant to paragraph 11 of the Policy, the Panel determines that English should be the language of the proceeding:
1) The Complaint was submitted in English and the Complainant requested English to be the language of the proceeding;
2) The website resolved from the Disputed Domain Name is entirely in English. The websites resolved from other domain names that appear to be registered by the Respondent (e.g., , , >, ) are also entirely in English or contain English content;
3) The Respondent appears to have registered other domain names through registrars whose registration agreements are in English (e.g., );
4) The Complainant has indicated that requiring the Complainant to proceed in Chinese would be burdensome and would unduly delay the proceeding; and
5) The Respondent has chosen not to participate in the proceedings and not to contest the language request of the Complainant; and
6) Forcing the Complainant to use Chinese would serve no discernible purpose. 6.2 Decision
To succeed in the proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly has trade mark rights in the MERRIL LYNCH, MERRILL and MERRILL EDGE trade marks. Although the MERRILL EDGE trade mark was registered on October 12, 2010 after the registration of the Disputed Domain Name, applications for the MERRILL EDGE trade mark filed on January 27, 2010 pre-date the registration of the Disputed Domain Name.
The MERRILL and MERRILL EDGE trade marks are incorporated almost in their entirety in the Disputed Domain Name. The only difference is the omission of a letter “r” in the Disputed Domain Name. The Panel agrees with the Complainant that omission of the letter “r” is insignificant and does to distinguish the Disputed Domain Name from the MERRILL and MERRILL EDGE trade marks.
Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the MERRILL and MERRILL EDGE trade marks and the first limb of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainant has denied any relationship with or authorization of the Respondent which could give rise to any rights or legitimate interests in the Disputed Domain Name. The Respondent has declined to provide any explanation or demonstrate any circumstances which may suggest that rights or legitimate interests nevertheless exists.
In the circumstances, in accordance with established principles, the Panel is of the opinion that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and the second limb of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy highlights an example of bad faith registration and use:
“… by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The evidence also shows that MERRIL LYNCH trade mark (and by association the MERRILL trade marks) is a well-known mark for the purposes of the proceedings. In the Panel’s view, the Respondent was undoubtedly familiar with the Complainant’s trade mark rights. The Respondent must have known that use of the Disputed Domain Name would create confusion with the Complainant’s trade marks as to source, sponsorship, affiliation or endorsement of the website resolved from the Disputed Domain Name.
The parking page resolved from the Disputed Domain Name is held out as a parking webpage provided by Sedo. The evidence also shows that Sedo’s domain parking service is associated with achieving commercial gains for domain name registrants through click-based commissions. The Panel accepts that the Complainant has established that the Disputed Domain Name is intended for commercial gain. In the circumstances, it is inconceivable that the use of the Disputed Domain Name is other than that highlighted in paragraph 4(b)(iv) of the Policy.
Further, the timing of the registration of the Disputed Domain Name is highly suspicious. The announcement of the Complainant’s online brokerage services under the MERRILL EDGE trade mark was made barely a few months earlier. Most of the links on the website resolved from the Disputed Domain Name lead to finance-related websites and competitors of the Complainant. The Respondent must have reasonable knowledge of the Complainant’s industry and would in all likelihood have been aware of the announcement. Such opportunistic registration and use of the Disputed Domain Name is highly suggestive of bad faith.
The Complainant has also highlighted that the website resolved from the Disputed Domain Name offers the Disputed Domain Name for sale. However, there is insufficient evidence to allow the Panel to determine if the offer for sale is subject to a price which exceeds documented out of pocket costs.
Also, the Complainant pointed out that the Respondent has been found to have registered and used other domain names in bad faith. In view of the above findings, it is not necessary for the Panel to comment on this issue.
In the circumstances, the Panel is satisfied that bad faith registration and use under the third limb of paragraph 4(a) of the Policy is established in this case. 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 name be transferred to the Complainant.
Soh Kar Liang
Sole Panelist
Dated: January 28, 2011
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