E*Trade Financial Holdings, LLC v. John Hidle
Claim Number: FA2204001994097
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is John Hidle (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etradn.click>, registered with NameCheap, Inc.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2022; the Forum received payment on April 27, 2022.
On April 27, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <etradn.click> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2022 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@etradn.click. Also on April 28, 2022, the 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 May 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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.
A. Complainant
i) Complainant, E*Trade Financial Holdings, LLC, operates a platform allowing retail investors to trade stocks online. Complainant has rights in the E*TRADE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,985,826, registered July 9, 1996). The disputed domain name is identical or confusingly similar to Complainant’s E*TRADE mark as it incorporates a majority of Complainant’s mark, merely removing the asterisk (*), changing the “E” at the end of the mark to the letter “N,” and adding the “.click” generic top-level domain (“gTLD”) to form a domain name.
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the E*TRADE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant and purport to offer identical investing services to conduct a phishing scheme to gain investor’s personal and account information. Furthermore, the disputed domain name is linked to Complainant’s legitimate website using several hyperlinks across the dispute domain’s landing page. Complainant also contends that the disputed domain creates initial interest confusion.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant to conduct a phishing scheme, which may demonstrate both bad faith disruption and attraction to commercial gain. The disputed domain name creates initial interest confusion using the disputed domain name. Respondent had actual knowledge or was, at a minimum, placed on constructive notice of Complainant’s rights in the E*TRADE mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 26, 2022.
2. Complainant has established rights in the E*TRADE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,985,826, registered July 9, 1996).
3. The disputed domain name’s resolving website shows Respondent is passing itself off as Complainant, phishing for users’ personal and financial information, and purporting to offer competing investing services.
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”).
Complainant asserts rights in the E*TRADE mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,985,826, registered July 9, 1996). Registration of a mark with a nation’s trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its registration with the USPTO, the Panel finds Complainant has rights in the E*TRADE mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <etradn.click> is identical or confusingly similar to Complainant’s E*TRADE mark, as it incorporates a majority of Complainant’s mark, merely omitting the asterisk (*), swapping the letter “E” at the end of the mark with the letter “N” and adding the “.click” gTLD. Neither omitting a single character, changing a single letter from a mark, or adding a gTLD sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See E*Trade Financial Holdings, LLC v. 房云玺, FA2108001960331 (Forum Sept. 20, 2021) (holding that removing an asterisk, adding a generic term, and appending a gTLD to Complainant’s mark does not differentiate a domain name from a mark under Policy ¶ 4(a)(i).); see also Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Thus, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s E*TRADE mark under Policy ¶ 4(a)(i).
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”).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the E*TRADE mark. When no response is filed, panels may look to a domain name’s WHOIS information to determine whether a Respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use another’s trademark may also demonstrate that Respondent is not commonly known by the domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies “John Hidle” as the domain registrant, and nothing within the record indicates Complainant authorized Respondent’s use of the E*TRADE mark. The Panel therefore finds Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant then argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead to pass itself off as Complainant, allegedly offering services identical to Complainant, and phish for users’ personal and financial information. Generally, passing off in furtherance of a phishing scheme does not qualify as either a bona fide offer or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Additionally, using a domain name to purport to offer identical or competing services does not qualify as a bona fide offer of goods or services, nor is it a legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of the landing page for the disputed domain name as evidence Respondent is passing itself off as Complainant, phishing for users’ personal and financial information, and purporting to offer competing investing services. Thus, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent lacks rights and legitimate interests in the disputed domain name because the disputed domain name links to Complainant’s legitimate website. Past panels have held that redirecting users to Complainant’s legitimate website does not confer rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Here, Complainant contends that Respondent provides several hyperlinks across the disputed domain name’s resolving website which link to Complainant’s legitimate website.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the domain name to pass itself off as Complainant in furtherance of a phishing scheme. Passing off in furtherance of a phishing scheme may demonstrate bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As previously mentioned, Complainant provides screenshots of the disputed domain name as evidence Respondent attempts to pass itself off as Complainant and allows users to input their login information for Complainant’s services. Therefore, the Panel finds bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant argues that Respondent purports to offer identical and competing services using the disputed domain name. Such use may also demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel recalls screenshots of the disputed domain name’s resolving website as evidence of Respondent allegedly offering competing investing services. The Panel therefore finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etradn.click> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 30, 2022
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