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.