Company awarded 2 of 4 domain names related to Merrill Lynch acquisition.
It’s not often that I read a domain name arbitration decision and think a cybersquatter won. But that’s the case with a recent decision handed down through National Arbitration Forum.
A New York company registered four domain names last year related to Bank of America’s (NYSE: BAC) acquisition: bofaml.com, mlbofa.com, bofamerrill.com, and merrillbofa.com. When you look at these four domain names, it’s clear what the domain owner was trying to do. The owner said in its response 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”. Domainer group? Try cybersquatting group.
The respondent claimed it registered the domains “because BOFA stands for two highly regarded Chinese characters meaning treasure (pronounced “bo” in Cantonese) and rich (pronounced “fa” or “fat” in Cantonese).
And the ML and Merrill part?
But the arbitrator on the case decided that only bofaml.com and mlbofa.com were confusingly similar to Bank of America’s BofA trademark.
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.
The problem with this decision, right or wrong, is that it will paint true domainers in a bad light.
Even worse, it can be used as an example of the inefficiency of the current arbitration system to build an argument to replace it – which is exactly what many over-zealous TM corporate attorneys want.
The decision is counter-intuitive to me in that the bofaml.com (almost a pure acronym) is more ambiguous, and less overtly infringing, than bofamerrill.com. In this last one, the finance & banking association is very clear.
There is a Boston Family Life (BostonFamilyLife.com) so a ‘bofaml.com’ could be short for that.
Acronyms seem harder to prove as infringing because they are abbreviations for “something else”. What that something else is … is open to interpretation. And of course tied to how the domain is actually being used.
M. Menius – I agree, it is counter-intuitive. The face that this person registered those “acroynms” in addition to the Merrill domains shows their intent. But absent that, it’s the Merrill ones that are most clear.
It appears they own over 150 domains.
Since, a zebra doesn’t change its stripes, I guess we will see other UDRP’s against this opportunist (cybersquatter) in the future.