The Bank of New York Mellon v Amy Mori, LA, Amelia Mellon, Mellon Family

WIPO Case No. D2025-0206

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Bank of New York Mellon v. Amy Mori, LA, Amelia Mellon, Mellon Family

Case No. D2025-0206

1. The Parties

Complainant is The Bank of New York Mellon, United States of America (“U.S.”), represented by Dinsmore &

Shohl LLP, U.S.

Respondents are Amy Mori, LA, U.S., and Amelia Mellon, Mellon Family, U.S.

2. The Domain Names and Registrar

The disputed domain names <mellonfamily.com> and <mellonfamilys.com> (the “Domain Names”) are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2025. On January 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 20, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the Domain Names, which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to Complainant on January 20, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting Complainant to either file separate complaints for the Domain Names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all Domain Names are under common control. Complainant filed an amended Complaint on January 25, 2025.

The Center verified that the Complaint together with the amended 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 Respondents of the
Complaint, and the proceedings commenced on January 28, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 17, 2025. Respondents sent an email communication to the
Center on February 6, 2025.

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The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 20, 2025. 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

Complainant is a global financial services and investments company that helps clients manage and service their financial assets through the investment lifecycle. Complainant, as of September 30, 2024, had approximately USD 52.1 trillion in assets under custody and/or administration, and USD 2.1 trillion in assets under management on behalf of clients around the world. Complainant is one of the three oldest banking corporations in the U.S. and one of the oldest banks in the world, having been established in 1784 as the Bank of New York by a group including Alexander Hamilton. The estimated number of employees worldwide as of November 2024 was approximately 55,000 across six continents.

Complainant has used the name “MELLON” since 1869, and the names “BNY MELLON” and “THE BANK OF NEW YORK MELLON” continuously since 2007, when The Bank of New York Company, Inc. merged with

Mellon Financial Corporation. Complainant is the owner of over 21 U.S. federal registrations for trademarks containing MELLON and others around the globe. The most relevant registrations are the following:

- MELLON, U.S. Registration No. 1,111,471, registered January 16, 1979, covering banking services. portfolio accounting, administration and reconciliation of accounts on behalf of others, and business management and administration services, and banking and financial services; investment management and advisory services; corporate trust services; trust and estate management services; securities custody, processing, lending, clearing and execution services; and depositary receipts services.
- MELLON, U.S. Registration No. 5,875,649, registered October 1, 2019, covering financial services, namely,
investment management and advisory services; providing investment management and financial asset
management services; and providing financial information via a website.
- the MELLON logo, U.S. Registration No. 5,991,019, registered February 18, 2020, covering financial and
investment management and advisory services.
- BNY MELLON, U.S. Registration No. 3,585,488, registered March 10, 2009, and THE BANK OF NEW

These registrations are valid and in effect and establish Complainant’s exclusive ownership in, and right to use, the marks.

Complainant’s trademarks are derived from the fact that the Mellon Financial Corporation owes its origin to
the Mellon family. In the 1800s, Thomas Mellon and his sons Andrew Mellon and Richard B. Mellon
opened T. Mellon & Sons’ Bank, which would, over time, grow into the Mellon Financial Corporation (and
which is turn merged into Complainant in 2007). Members of the Mellon family remained active in the bank’s
management until well into the 20th century. The marks have been widely promoted among members of the
general consuming public and to persons in the financial industry. Complainant is consistently named as
one of the top one hundred most valuable banking brands in the world by Brand Finance. Due to
widespread, continuous, and highly publicized use throughout the U.S. and the world, Complainant contends
the marks have become well known. Complainant is also the owner of numerous domain names, including

<mellon.com>, <bny.com>, and <bnymellon.com>, which are used in the conduct of its business.

The Domain Name <mellonfamily.com> was registered on September 16, 2024, and the Domain Name
<mellonfamilys.com> was registered on January 5, 2025. When Complainant first learned of the Domain
Name <mellonfamily.com>, it resolved to a webpage that provided information about the Mellon family and
its business, implying a relationship with the Mellon family and Complainant. Shortly after it was registered in
September 2024, Complainant employed an enforcement agency to contact the owner of the

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<mellonfamily.com> Domain Name alleging trademark infringement. Following that contact, the content of
the website linked to the Domain Name was removed and replaced with a webpage indicating that it was
password protected. Thereafter, the <mellonfamilys.com> Domain Name was registered on January 5,
2025, and it included the same type of content as had appeared on the page associated with the
<mellonfamily.com> Domain Name. Subsequently, the content for the <mellonfamilys.com> Domain Name

was also replaced with a webpage indicating that it was password protected.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant has provided evidence concerning the ownership of its MELLON trademarks, their longstanding use, and their strong reputation in the U.S. and elsewhere. Complainant contends that the Domain Names are confusingly similar to Complainant’s MELLON trademarks. The Domain Names are virtually identical to and encompass Complainant’s MELLON mark, with the addition of the terms “family” or “familys” after the MELLON mark, respectively. Complainant claims neither of these additional terms or the generic Top-Level Domain (“gTLD”) “.com” serve to distinguish the Domain Names from Complainant’s marks. Indeed, the addition of the term “family” could heighten the potential for confusion, given that the MELLON mark derives from Complainant’s founding by and past close association with the Mellon family. Both Domain Names are also highly similar to Complainant’s domains names, and in particular, Complainant’s official domain name <mellon.com>. Complainant claims that the Domain Names could readily be mistaken as official domain names associated with Complainant or as associated and authorized sites providing information about the Mellon family and its historical association with Complainant.

In light of the foregoing, Complainant concludes the Domain Names <mellonfamily.com> and

<mellonfamilys.com> are confusingly similar to Complainant’s trademarks and domain names.

(ii) Rights or legitimate interests

Complainant submits Respondents have no rights or legitimate interests in the Domain Names. First, Respondents are not commonly known by either Domain Name, nor is there any indication that Respondents registered either of them as a trademark. Second, Complainant has never assigned, sold, or transferred any rights in any of its marks, including the MELLON mark, to Respondents. Third, Respondents have no legal relationship with Complainant, and Complainant has not granted Respondents permission to use or register any of its marks as a domain name.

Further, Complainant contends Respondents are not making a legitimate noncommercial or fair use of the Complainant states it is impossible to ascertain Respondents’ precise use of the Domain Names, because each resolve to a page with no content other than a message indicating that its content is password protected, and Complainant does not have the password. However, when Complainant first learned of the Domain Name <mellonfamily.com>, it resolved to a webpage that provided information about the Mellon family and its business, implying a false relationship with the Mellon family, and by extension, with Complainant. Complainant employed an enforcement agency to contact the owner of the <mellonfamily.com> Domain Name alleging trademark infringement shortly after it was registered in September 2024. Following that contact, the content of the website was removed, and the only content present was a webpage indicating that it was password protected. Thereafter, the <mellonfamilys.com> Domain Name was registered on January 5, 2025, and the associated webpage included the same type of content as had appeared on the page associated with the <mellonfamily.com> Domain Name. Complainant contends the registration of this second Domain Name shows Respondents’ continued attempts to take advantage of Complainant’s mark and reputation.

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Complainant states the content available on the websites associated with the Domain Names, prior to being replaced with the password-protected pages, contained information intended to mislead users into thinking that these sites were Complainant’s official sites. The pages included various hyperlinks that when clicked, connected directly to Complainant’s domain names, and also connected directly to Complainant’s official social media accounts. These sites also featured a three-bar Mellon Financial logo, previously registered as a trademark in the U.S., and still registered trademarks in the European Union and the United Kingdom. At least one of the sites associated with the Domain Names also featured Complainant’s current MELLON logo, other trade dress, and images of Complainant’s skyscraper landmark building in Pittsburgh, Pennsylvania, complete with the BNY MELLON signage on the top of the building. The sites also contained numerous statements indicating that they were operated by Complainant and/or the Mellon family, speaking in terms of “us” “we”, and “our,” falsely implying that the content originated with the Mellon family and/or Complainant.

Complainant explains that, taken together, the initial content of both websites points to an attempt to impersonate Complainant and/or the Mellon family, and to deceive the public into believing that the associated sites are connected with Complainant. Further, Complainant contends that a domain name that falsely suggests an affiliation with the trademark owner does not constitute fair use or give any rights or legitimate interest in that domain name. Indeed, the fact that the sites impersonate Complainant itself establishes that Respondents have no rights or legitimate interests in the Domain Names. For the foregoing reasons, Complainant submits that Respondents have no rights or legitimate interests in the Domain Names.

(iii) Registered and used in bad faith

Complainant claims Respondents have registered and used the Domain Names in bad faith. This contention is supported by several facts: (a) Respondents almost certainly had actual knowledge of Complainant’s rights in the MELLON marks at the time they registered each of the Domain Names; (b) the Domain Names at one time resolved to websites that contained content that not only falsely suggested an affiliation with Complainant and/or the Mellon family, but also impersonated them; (c) the Domain Names are likely to attract Internet users to Respondents’ websites in a manner likely enable Respondents to trade off Complainant’s MELLON marks and reputation or to disrupt the business of Complainant, and (d) Respondents’ use of a privacy protection service in the registration of the Domain Names in order to conceal identity. These circumstances, taken together with the fact that Respondents have no rights or legitimate interests in the Domain Names, combine to demonstrate that Respondents have acted in bad faith.

Complainant contends Respondents had actual knowledge of Complainant’s rights in its marks prior to registering the Domain Names. There is no other reasonable explanation for the registration of either Domain Name. Based on the content of the associated websites prior to the point where they were replaced with the password-protected page, Respondents were well aware of the Mellon family and its operations in the financial industry. That content included hyperlinks that resolved to Complainant’s official websites and social media accounts, prominently displayed the current MELLON logo and a photo of Complainant’s office building in Pittsburgh and otherwise copied logos and trade dress from Complainant’s official websites, including the official Mellon website. Given the nature of this content, it is readily apparent that Respondents were aware of Complainant’s marks when the Domain Names were registered. Further, there can be no doubt that Respondents were aware of Complainant’s marks when they registered the <mellonfamilys.com> Domain Name, as it was registered after the security firm contacted Respondents with allegations that the <mellonfamily.com> Domain Name infringed Complainant’s trademark rights.

Additionally, an Internet search for the term “Mellon,” brings up websites related to Complainant as the first two hits and also displays Complainant’s official websites as the third and fourth hits. This is clear evidence that Respondents likely knew of Complainant’s prior rights. Under similar circumstances, panelists have

inferred that respondents were likely aware of the complainant’s trademark rights prior to registering the disputed domain name. Complainant asserts bad faith exists where a respondent knew or should have known of the complainant’s trademark rights yet still registered a domain name without any rights or
legitimate interests.

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Further Respondents’ use of the Domain Names to impersonate Complainant and/or the Mellon family points to the conclusion that Respondents have acted in bad faith. As discussed above, the content of Respondents’ sites suggests that they were either affiliated with the Mellon family or with Complainant, either through the use of wording such as “What We Do” and “Our family” on the sites, or through the use of Complainant’s logos and direct links to Complainant’s official websites and social media accounts. While Complainant can only speculate as to the reason for or ultimate aim behind such impersonation, it is well known that impersonation is often done to facilitate illegal activity, such as phishing, fraud, or identity theft, as websites that pass themselves off as someone else are ready vehicles for such bad faith activity.

The fact that the associated websites appear designed to impersonate Complainant also creates a situation ripe for financial fraud. Given the nature of Complainant’s business, consumers are often in the position of entrusting Complainant with sensitive personal and financial data, as well as (potentially) the means to

access user’s financial resources. The Domain Names thus provide Respondents with the means to
impersonate Complainant and obtain this information from misled consumers or through malicious cyber-
attacks, leaving them free to take actions that could be financially ruinous to affected individuals.

Complainant submits Respondent’s registration and use of the Domain Names is an attempt to create confusion with Complainant’s MELLON marks or otherwise trade off of Complainant’s name and reputation. The use of Complainant’s marks as part of the Domain Names is calculated to draw in Internet users searching for Complainant’s MELLON marks or services and/or to divert traffic away from Complainant’s websites. Respondents’ original intent for these sites is demonstrated by the content that appeared prior to the shift to the password-protected pages, and reflects calculated attempts to reproduce content, logos, and other indicia that would cause consumers to mistake the sites for official sites of Complainant.

Moreover, the danger inherent in this situation is not only represented by the present harm to Complainant, but also the future risk that the Domain Names, by virtue of not being under the control of Complainant, could at any point be used in a manner harmful to Complainant’s business or its customers (via possible fraud or other illegal activity).

Finally, Respondents employed a privacy protection service in registering the Domain Names, which also supports an inference of bad faith. It is not the mere fact that Respondents employed a privacy registration service that is indicative of bad faith, but Respondents’ use of that service in conjunction with the other elements at play here, which is indicative of bad faith registration and use.

For the foregoing reasons, Complainant submits that Respondents registered and are using the Domain

Names in bad faith.

B. Respondents

Respondents did not reply to Complainant’s contentions; instead, Respondent Amelia Mellon, Mellon

Family, submitted only an unintelligible email indicating “？？？？？”.

6. Discussion and Findings

To succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph

4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Names registered by Respondents are identical or confusingly similar to a trademark or

service mark in which Complainant has rights;

(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and

(iii) Respondents have registered and are using the Domain Names in bad faith.

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A. Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleges that the registrants of the Domain Names are the same entity or mere alter egos of each other, or under common control. Complainant requests consolidation of the Complaint against the multiple registrants pursuant to paragraph 10(e) of the Rules.

Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes.
At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one
domain name, provided that the domain names are registered by the same domain name holder. In
addressing the Complainant’s request, the Panel may consider whether (i) the domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable

to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

The Panel finds that both Domain Names currently resolve to identical webpages that are password
protected. The look and feel, including font and color of the password protected page for both Domain
Names, is identical. The fact that each Domain Name resolves to content that is the same points to a single
entity as the owner of or responsible party for both Domain Names. Additionally, the content that was initially
included on the <mellonfamily.com> Domain Name before it became password protected was virtually
identical to the content that was also initially included on the <mellonfamilys.com> Domain Name, before it
became password protected. Moreover, both Domain Names use the same name servers, as reflected in
the WhoIs records. Further, both Domain Names are essentially identical – the only difference being that
one is singular, and the other is plural. Finally, the registrants did not respond to Complainant’s request for
consolidation or to these allegations.

When these facts are considered, the logical conclusion is that a single owner or party is in control of both Domain Names. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different registrants in a single proceeding.

B. Identical or Confusingly Similar

It is well accepted that the first element of the Policy functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but straightforward comparison between Complainant’s trademark and the Domain Names. WIPO Overview 3.0, section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. Domain Names. The Domain Names encompass Complainant’s MELLON mark, with the addition of the descriptive terms, “family” or “familys,” after the mark, respectively. The addition of these terms does not prevent a finding of confusing similarity between the Domain Names and Complainant’s marks.

Accordingly, the Panel finds the Domain Names are confusingly similar to Complainant’s marks for the purposes of the Policy, and the first element of the Policy has been established.

C. Rights or Legitimate Interests

Although the overall burden of proof in UDRP proceedings is on a complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

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proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondents lack rights or legitimate interests in the Domain Names. Respondents do not appear to be commonly known by either Domain Name. Complainant has not transferred any rights in any of its marks, including the MELLON mark, to Respondents, nor granted Respondents permission to use or register any of its marks as a domain name. Further, Respondents are not making a legitimate noncommercial or fair use of the Domain Names, nor are they using them in connection with a bona fide offering of goods or services. Complainant has presented evidence that when it first learned of the registration of the Domain Name <mellonfamily.com>, it resolved to a webpage that provided information about the Mellon family and its business, implying a false relationship with the Mellon family and/or Complainant. Following contact by the enforcement agency the content of the site linked to the Domain Name <mellonfamily.com> was removed and replaced with a webpage indicating it was password protected. The same course of conduct occurred with respect to the Domain Name <mellonfamilys.com>. Taken together, the initial content of both websites points to an attempt to impersonate Complainant and/or the Mellon family, and to deceive the public into believing that the associated sites are in some way connected with Complainant. Panels have held that the use of a domain name for illegitimate activity, such as that demonstrated here, cannot confer rights or legitimate interests on a respondent. See e.g., WIPO Overview 3.0, section 2.13.1; Black Diamond Equipment, LTD v. Shuhua Lu, WIPO Case No. D2022-4311 (“The general impression created by the Domain Name’s website, including use of a replica of the Complainant’s distinctive, trademarked logo, the Complainant’s product imagery and product names, is one of impersonation of the Complainant. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., impersonation) can never confer rights or legitimate interests on a respondent.”); see also SODEXO v. Ivan Zavalin, SvitSymok, WIPO Case No. D2024-2830 (noting that a domain name that resolves to an “empty password-protected website” cannot be considered a bona fide offering).

Respondents have not rebutted Complainant’s prima facie showing and have not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names. Accordingly, the Panel finds the second element of the Policy has been established.

D. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondents registered and are using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.”

Here, the Panel determines that the Domain Names were registered and have been used in bad faith. In the present case, as discussed above, the Panel observes that Respondents used the Domain Names to impersonate Complainant and/or the Mellon family, before shifting them to be linked to password-protected webpages after being contacted by an enforcement agency. The Panel also notes that the Respondents did not substantively reply to either the enforcement agency or the present Complaint, which the Panel would expect in the event of any potential good faith use, but rather reacted in a way suggesting that Respondents have no rights or legitimate interests in the Domain Names. The evidence strongly suggests that Respondents were aware of Complainant and its trademarks and targeted those marks when registering the Domain Names. Complainant’s MELLON marks were registered, well-established and and well-known long before the Domain Names were registered and used.

Having reviewed the record, the Panel finds Respondents’ registration and use of the Domain Names constitutes bad faith under the Policy.

Accordingly, the Panel finds that Complainant has established the third element of the Policy.

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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 Domain Names <mellonfamily.com> and <mellonfamilys.com> be transferred to Complainant.

/Christopher S. Gibson/
Christopher S. Gibson
Sole Panelist
Date: March 21, 2025