WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pershing Investments, LLC v. Alexey Chichaykin

Case No. D2018-2437

1. The Parties

The Complainant is Pershing Investments, LLC of New York, New York, United States of America (“United States”), represented by Reed Smith LLP, United States.

The Respondent is Alexey Chichaykin of North Miami Beach, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <mellonpershingfinancial.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 26, 2018, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2018.

The Center appointed Lynda M. Braun as the sole panelist in this matter on November 28, 2018. 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 a wholly-owned subsidiary of The Bank of New York Mellon Corporation, and an affiliate of The Bank of New York Mellon. The Complainant is a worldwide banking and financial services holding company that was formed in 2007 as a result of the merger of The Bank of New York and Mellon Financial Corporation. Today, The Bank of New York Mellon Corporation is the world’s largest custodian bank and asset-servicing company, with USD 33.6 trillion assets under custody and/or administration.

The Bank of New York Mellon Corporation and the Bank of New York Mellon are the owners of record for the trademarks at issue in this proceeding.¹ The Complainant and its affiliates have provided a broad suite of global financial solutions to advisors, broker-dealers, registered investment advisor firms and wealth managers since 1939. With a network of 23 offices and 1,400 clients in 40 different countries (which represent approximately 7 million investor accounts), the Complainant has developed a global reputation as a premier financial services company.

The Complainant owns hundreds of registrations for trademarks for PERSHING, MELLON and BNY MELLON throughout the world, including in the United States, hereinafter referred to as the PERSHING, MELLON and BNY MELLON marks.The Complainant adopted and has been using the PERSHING marks since as early as 1939; the Complainant and its affiliates and predecessors-in-interest adopted and have been using the MELLON and BNY MELLON marks since as early as 1869. Examples of several of the Complainant’s trademarks include PERSHING in International Classes 16 and 36 for, among other services, brokerage and dealer services, United States Registration No. 2,245,524, registered on May 18, 1999; MELLON in International Class 36 for banking services, United States Registration No. 1,111,471, registered on January 16, 1979; and BNY MELLON in International Classes 35 and 36 for, among other services, banking and financial services, United States Registration No. 3,585,488, registered on March 10, 2009. As a result, the Complainant and its affiliates have developed significant goodwill in the PERSHING, MELLON and BNY MELLON marks and have grown these marks into some of the most recognized and well-known brands in the financial industry.

The Complainant also owns more than 200 domain names comprised of the PERSHING, MELLON, and BNY MELLON marks, which the Complainant uses in connection with its financial products and services, and which are accessible to consumers throughout the world. These domain names include <pershing.com>, <pershingadvisorsolutions.com>, <pershing.broker>, <pershing.finance>, <bnymellon-pershing.com>, <pershingbnymellon.com> and <mellonpershing.com>.

The Respondent registered the Disputed Domain Name on April 18, 2018, many years after the Complainant began using the PERSHING, MELLON and BNY MELLON marks. The Disputed Domain Name resolves to an Internet error page.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademarks.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.

It is uncontroverted that the Complainant has established rights in the MELLON and PERSHING marks based on both longstanding use and its numerous trademark registrations for those trademarks in the United States and in countries worldwide. Several UDRP panels have concluded that the combination of two registered trademarks as a domain name constitutes confusing similarity under the Policy. See Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) (“Zhao”), WIPO Case No. D2000-0717.

The Disputed Domain Name <mellonpershingfinancial.com> consists of the MELLON and PERSHING marks followed by the descriptive word “financial”, and the generic Top-Level Domain (“gTLD”) “.com”.

Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011‑0795; Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. As stated in section 1.8 of WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Panel finds that the Disputed Domain Name <mellonpershingfinancial.com> is confusingly similar to the Complainant’s MELLON and PERSHING marks as the Disputed Domain Name incorporates the Complainant’s MELLON and PERSHING marks in their entirety. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, paragraph 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its MELLON or PERSHING marks. The name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s MELLON and PERSHING marks and to drive Internet traffic seeking the Complainant’s services to the Respondent’s inactive website thereby disrupting the Complainant’s business.

Second, the Panel finds that the Respondent knew or should have known of the Complainant’s rights in its MELLON and PERSHING marks when registering the Disputed Domain Name. As noted above, the Complainant’s MELLON and PERSHING marks are widely known and used and the Respondent registered the Disputed Domain Name many years after the Complainant first used and obtained its trademark registrations for the MELLON and PERSHING marks. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its MELLON and PERSHING marks when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.

Third, the Panel notes that the Disputed Domain Name is inactive since it resolves to an Internet error page with no content. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates well-known trademarks without a legitimate Internet purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177. Here, the Panel considers the Respondent’s passive holding of the Disputed Domain Name to be a further indication of bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <mellonpershingfinancial.com>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: December 12, 2018

^1< These relationships are sufficient to establish the Complainant’s rights in the trademarks listed herein for purposes of standing to file a UDRP complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1; seealso Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796 (“It has been accepted in several decisions that a company related as a subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark.”).