The Complainant is Bank of America Corporation of Charlotte, North Carolina, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America (“USA”).
The Respondent is Dimitrios Zervos of Samos, Greece. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2012. On September 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 September 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 17, 2012. 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. According to the Complaint, it is the largest bank holding company in the USA and the second largest by market capitalization. In 2012, it was ranked by Fortune magazine first in terms of revenue for commercial banks and thirteenth in terms of revenue in that magazine’s listing of the Fortune 500.
The name Merrill Lynch dates back to 1915 when the firm Charles E. Merrill & Co. joined with Edmund C. Lynch to form Merrill Lynch & Co., in New York City, USA. Over time, it became a large and widely known wealth management, capital markets and advisory company operating from many offices around the world.
In 2009, the Complainant acquired Merrill Lynch & Co. Inc. Following that acquisition, the Complainant apparently became the largest stockbroker in the world. It continues to use the name Merrill Lynch in a wide range of wealth management, securities trading and investment banking services around the world since that acquisition.
The Merrill Lynch business registered many trademarks around the world before it was acquired by the Complainant. Following the acquisition, the Complainant has become the registered owner of these trademarks.
The Complaint refers to, or identifies, a large number of registered trademarks for, or based on, MERRILL LYNCH. For present purposes, it is sufficient to refer by way of illustration only to:
- US TM No. 1,272,653 for MERRILL LYNCH registered in April 1984;
- US TM No. 1,729,811 for MERRILL LYNCH CONSULTS registered in November 1992;
- US TM No. 2,353,416 for MERRILL LYNCH ONLINE registered in May 2000;
- CTM No. 29280 for MERRILL LYNCH registered in February 1998;
- US TM No. 1,022,222 for a bull device registered in October 1975.
The Respondent registered the disputed domain name on or around December 30, 2011.
The disputed domain name resolves to a website which, under the heading “Merrill Lynch Careers” consists of 4 paragraphs of text, a photograph of the famous sculpture of a bull in or near Wall Street with the caption “Merrill Lynch Careers” and pages headed “About Us”, “Contact Us” and “Privacy Policy”. A further page, “Merrill Lynch Careers” appears to be identical to the Home or landing page.
The “About Us” page simply states:
This website was created to provide you with useful information. If you need any help or have any relative questions [sic] please contact us via our contact us page. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. The Panel emphasizes that the registered trademarks specifically referred to in section 4 above are not an exhaustive listing of all the registered trademarks on which the Complainant relies or of all the rights it claims including, for example, common law rights arising from the extensive use of the name MERRILL LYNCH around the world.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
Disregarding the gTLD component, the disputed domain name differs from some of the Complainant’s registered trademarks only by the addition of the word “careers”. The words “Merrill” and “Lynch” may be reasonably common surnames in some parts of the world, but in combination they have significance only because of their use over almost 100 years in the business of the Complainant and its predecessors.
The addition of the descriptive term “careers” does not dispel the likelihood that notional users of the Internet would consider the disputed domain name was associated in some way with the Complainant as the person standing behind the MERRILL LYNCH trademark. To the contrary, the natural meaning of the composite expression reinforces the relationship as it conveys an intended subject matter of careers with, or relating to, the Complainant’s MERRILL LYNCH business.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
(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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), para. 2.1.
In the present case, the Complainant points out that there is no relationship such as a licence or other arrangement between it and the Respondent. It has not consented to the Respondent registering and using the disputed domain name. Nor is the disputed domain name apparently derived from the Respondent’s name. Typically, these factors would be sufficient to raise the required prima facie case.
The Complainant further contends that, as its name is so well-known and recognized, that there can be no legitimate use by the Respondent. In addition, the Complainant contends that the solicitation of personal information from Internet users on the “Contact Us” page under the guise of providing information about careers at “Merrill Lynch” discloses that the website is really a phishing exercise of the kind considered in Grupo Financiero Inbursa SA de CV v Ibuirsa,WIPO Case No. D2006-0614 and Career Builder LLC v Stephen Baker, WIPO Case No. D2005-0251.
The Panel considers the Complainant goes too far in its contention that there can be no possible legitimate use of the disputed domain name. It is at least arguable that a genuine site dedicated to providing information about or training for careers at “Merrill Lynch” could be a legitimate interest under the Policy. It is unnecessary, however, to decide that issue in this case.
Even in those cases where use of another’s trademark has been held to be a legitimate use such as genuine “gripe” sites or situations where a distribution or retail outlet for the relevant branded products is involved, it is typically necessary for the respondent to have shown genuine use of the domain name for the claimed purpose or to demonstrate that preparations are well in hand for the launch of a genuine site. See e.g. WIPO Overview 2.0, paragraphs 2.4 and 2.3.
The Respondent’s website in the present case, however, does not meet that requirement. The Panel accepts that there can be cases in which rudimentary or fairly basic websites may be sufficient to qualify as a bona fide use. The website in the present case is very basic indeed. It does not purport to provide any information or assistance at all in relation to careers at “Merrill Lynch” other than the barest platitudes. Given the content of the website, it is very hard to resist the conclusion that it is really just a pretext much like the website put up by the respondent in Panavision International LP v Toeppen, 141 F 3d 1316 (1998).
The Panel is reinforced in that conclusion by the Respondent’s failure to provide any explanation or defence of his use in the face of the Complainant’s allegations.
Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
It is plain that the Respondent very well knew of the Complainant’s MERRILL LYNCH trademark when registering the disputed domain name. The composite expression comprising the disputed domain name is plainly intended to suggest information or services relating to careers at “Merrill Lynch”. The text of the website which the disputed domain name resolves to reinforces that conclusion, if any reinforcement be needed.
For the reasons explained in section 5B above, however, the Respondent did not have rights or a legitimate interest under the Policy in registering and using the disputed domain name.
In these circumstances, the Panel concludes that the Respondent registered the disputed domain name to take advantage of its significance as a trademark, without authorization from the Complainant or other justification and the content of the website demonstrates that the Respondent is using the disputed domain name to take advantage of that trademark signification.
As a result, on the record in this case the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under the Policy. 6. Decision
For 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.
Warwick A. Rothnie
Sole Panelist
Dated: October 31, 2012
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