E*Trade Financial Holdings, LLC v. 房云玺
Claim Number: FA2108001960331
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is 房云玺 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etradetime.com>, registered with Domain International Services Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2021; the Forum received payment on August 19, 2021. The Complaint was received in English.
On August 23, 2021, Domain International Services Limited confirmed by e-mail to the Forum that the <etradetime.com> domain name is registered with Domain International Services Limited and that Respondent is the current registrant of the name. Domain International Services Limited has verified that Respondent is bound by the Domain International Services Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of September 13, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@etradetime.com. Also on August 24, 2021, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
To the extent the Forum receives notice from the Registrar that the registration agreement concerning the disputed domain name is in a language other than English, Complainant submits that the Respondent is capable of proceeding in English such that the proceedings should go forward in English.
The record shows that the registrar has advised the Forum that the language of the registration agreement is Chinese Traditional. Complainant submits that the language of the proceeding should be English because the disputed domain name contains English words, English is a common or "connecting" language in business and travel and if the proceeding were not in English, Complainant would have to translate all the documents of the proceeding into a foreign language, which would be costly, unnecessarily time-consuming and unreasonable.
The Panel has considered this issue carefully and has decided in all the circumstances that pursuant to UDRP Rule 11(a), persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language and that the English language would be the most appropriate language. The Panel decides that the proceeding should be in English and that it should go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant provides a suite of digital financial services for investors, traders, financial advisors, stock plan participants, and stock plan administrators. Complainant has rights in the E*TRADE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,985,826, registered July 9, 1996). See Compl. Exhibit 2. Respondent’s <etradetime.com> domain name is confusingly similar to Complainant’s E*TRADE mark as it merely adds the generic term “time” and the gTLD “.com” while removing the asterisk.
Respondent lacks rights or legitimate interests in the <etradetime.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the E*TRADE mark. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent fails to make active use of it.
Respondent registered and uses the <etradetime.com> domain name in bad faith as Respondent fails to make active use of the disputed domain name. Additionally, Respondent had constructive and actual knowledge of Complainant’s rights in the E*TRADE mark prior to registering the disputed domain name, evidenced by the fame of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides a suite of digital financial services for investors, traders, financial advisors, stock plan participants, and stock plan administrators.
2. Complainant has established its trademark rights in the E*TRADE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,985,826, registered July 9, 1996).
3. Respondent registered the <etradetime.com> domain name on August 8, 2021.
4. Respondent has failed to make an active use of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the E*TRADE mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,985,826, registered July 9, 1996). See Compl. Exhibit 2. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration, the Panel finds Complainant has demonstrated rights in the E*TRADE mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s E*TRADE mark. Complainant argues Respondent’s <etradetime.com> domain name is confusingly similar to Complainant’s E*TRADE mark as it merely adds the generic term “time” and the gTLD “.com” while removing the asterisk. Adding a generic term and a gTLD while removing punctuation from a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s E*TRADE trademark and to use it in its domain name, adding the word “time”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <etradetime.com> domain name on August 8, 2021;
(c) Respondent has failed to make an active use of the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <etradetime.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the E*TRADE mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “房云玺,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the E*TRADE mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent fails to use the <etradetime.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent fails to actively use it. An inactive website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot showing the disputed domain name does not resolve to an active webpage. See Compl. Exhibit 8. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Secondly, Complainant contends Respondent registered and uses the <etradetime.com> domain name in bad faith as Respondent fails to make active use of it. Failing to make active use of a disputed domain name can demonstrate bad faith per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Here, the Panel may recall Complainant provides a screenshot showing the disputed domain name does not resolve to an active webpage. See Compl. Exhibit 8. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends Respondent registered the <etradetime.com> domain name in bad faith as Respondent had constructive and actual knowledge of Complainant’s rights to the E*TRADE mark prior to registration of the disputed domain names based on the fame of Complainant’s trademark. While constructive knowledge is insufficient to find bad faith, the fame of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant argues Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the E*TRADE mark because of the fame of Complainant’s mark. Complainant provides screenshots showing A Google search for webpages that contain both the terms “E*Trade” and “finance” yielded over 494 million results and that Complainant is featured in many major news outlets, such as Newsday, the Los Angeles Times, SNL Financial Services Daily, and the Chicago Tribune. See Compl. Exhibit 3 and 5. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etradetime.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 20, 2021
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