E*Trade Financial Holdings, LLC v. Host Master / Transure Enterprise Ltd
Claim Number: FA2206002002602
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etradeaccounts.com>, registered with Above.com Pty Ltd..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2022; the Forum received payment on June 30, 2022.
On July 11, 2022, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <etradeaccounts.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 July 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@etradeaccounts.com. Also on July 12, 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 August 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the E*TRADE and ETRADE.COM service marks established by its ownership of the portfolio of service mark registrations described below and use of the mark in its financial services business providing a suite of digital financial services for investors, traders, financial advisors, stock plan participants, and stock plan administrators.
Complainant submits that it has thereby built considerable goodwill, widespread recognition, and secondary meaning, in its E*TRADE and ETRADE.COM marks that have become associated with Complainant and the services. Complainant now employs more than 4,100 individuals and has 30 retail branches across the United States. In October 2020, Morgan Stanley announced that it had completed its acquisition of Complainant.
Complainant submits that the disputed domain name, which incorporates Complainant’s E*TRADE and ETRADE.COM marks in whole, must be deemed virtually identical or confusingly similar to Complainant’s registered marks. See Global Esprit Inc. v. Living 4, WIPO Case D2004-0318 (confusion found in domain name that incorporated complainant’s mark in full).
It is further contended that the addition of the generic or descriptive term “accounts” does not obviate the confusing similarity. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding . . . descriptive terms . . . is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i)”).
On the contrary, Complainant argues that the element“accounts” is a term associated with Complainant’s business, which enhances the confusingly similarity. See Morgan Stanley v. Liam Murphy / Murphy IT Services, FA 1832448 (finding confusing similarity where disputed domain name contained abbreviation of Complainant’s mark and was followed by generic term associated with Complainant and its business).
Additionally, Complainant submits that the elimination of the asterisk from Complainant’s E*TRADE mark, and the addition of the generic Top Level Domain (“gTLD”) extension < .com> fail to obviate the confusing similarity between the disputed domain name and Complainant’s E*TRADE and ETRADE.COM marks. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that upon information and belief, neither the term ETRADE nor the disputed domain name is part of Respondent’s name.
Additionally, upon information and belief, prior to the time Complainant established rights in its E*TRADE and ETRADE.COM marks, Respondent did not actually engage in any business or commerce under the name ETRADE or the disputed domain name, and Respondent was not commonly known by that name. See Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name).
Complainant asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use Complainant’s marks or the disputed domain name. Indeed, Respondent has no relationship whatsoever with Complainant. See Charles Jourdan Holding AG v. AAIM, WIPO Case D2000-0403 (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Complainant further contends that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use.
Referring to a screen capture of the web page to which the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant submits that the exhibit shows that the disputed domain name resolves to a “parking” website, which site contains links to third-party businesses offering financial services related to Complainant’s services.
Complainant contends that such parking and linking is not a legitimate or bona fide use of the disputed domain name. See Expedia, Inc. v. Compaid, FA 520654 (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant adds that Respondent’s use of the disputed domain name in connection with the offering of services that are identical and/or closely related to those services offered by Complainant under a name and mark identical or confusing similar to Complainant’s marks is not a legitimate or bona fide use of a domain name. See FC Online Marketing, Inc. v. Brett Ray, FA 1643100 (use of confusingly similar domain name “to market, for commercial gain, services similar to those of Complainant,” was not bona fide or legitimate use).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that it is clearly is more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s service marks in which Complainant has a long and well-established reputation established by its exclusive use of the marks in the financial and investment services industries.
Complainant contends that there can be no doubt that Respondent was aware of Complainant’s E*TRADE and ETRADE.COM marks when he or she chose and registered the disputed domain name, and in fact chose the domain name because it was confusingly similar to Complainant’s well-known marks and Respondent intended to capitalize on that confusion. This alone constitutes evidence of bad faith use and registration of a domain. See Disney Enters., Inc. v. JalapenoWare LLC, FA 1302464 (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM).
Complainant further argues that its marks are so well-known that Respondent would be hard- pressed to provide any legitimate explanation for registering the disputed domain name other than to take advantage of the goodwill and brand recognition associated with Complainant and its famous E*TRADE and ETRADE.COM marks. See Morgan Stanley v. TONY / shentony, FA 1637186 (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”).
Additionally, Complainant submits that by causing initial interest confusion, Respondent’s use and registration of the disputed domain name disrupt the business of Complainant, which is additional evidence of bad faith use and registration. See Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion).
Further referring to the web page to which the disputed domain name resolves which has been exhibited in the annex to the Complaint, Complainant further contends that the disputed domain resolves to a website that provides links to businesses that offer services related to Complainant’s services and that presumably, Respondent receives a financial benefit in the form of click-through fees from third-party businesses which is a further indication of bad faith. See E*TRADE and ETRADE.COM marks FA 992206 (receipt of click-through fees is evidence of bad faith).
Complainant adds that even if Respondent does not receive click-through fees and it was the Registrar, and not the Respondent, who, pursuant to the “parking” agreement between the Respondent and Registrar, generated the links to third party websites, Respondent still acted in bad faith because s/he allowed “the disputed domain name to be used to attract, for commercial gain, Internet users who may be confused as to Complainant[s’] affiliation with those sites.” Discovery Communications, LLC v. Tripp Wood, FA 1299987 (“a respondent engages in bad faith registration and use when the respondent has authorized the use of the parking service and thus condoned its use of the disputed domain name”).
Furthermore, Complainant submits that in a recent proceeding brought by Complainant’s affiliated company Morgan Stanley against the same Respondent named in this proceeding (along with several others), another panel found that the Respondent’s registration and use of a domain name that incorporated the name of Morgan Stanley and resolved to a parking site was also in bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii)”).
Finally, Complainant submits that because its marks are well known and registered, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time he or she registered the confusingly similar domain name. This knowledge indicates Respondent’s bad faith use and registration. See Carnival Plc v. Belize Domain WHOIS Service Lt, FA 997973 (constructive knowledge of mark due to federal registration is evidence of bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the E*TRADE and ETRADE.COM trademarks which it uses in its online stock trading business. Complainant is the owner of a portfolio of registered trademarks including the following for which it has submitted copies of the registration certificates:
· United States registered service mark E*TRADE, registration number 1985826, registered on the Principal Register on July 9, 1996, for services in international classes 36;
· United States registered service mark E*TRADE (figurative), registration number 2,220,629, registered on the Principal Register on January 26, 1999 for services in international class 36;
· United States registered service mark E*TRADE (figurative), registration number 2,479,300, registered on the Principal Register on August 21, 2001 for services in international classes 36, 38, 41 and 42;
· United States registered service mark ETRADE.COM, registration number 2,574,989,registered on the Principal Register on June 4, 2002 for services in international class 36;
· United States registered service mark E*TRADE FINANCIAL, registration number 2,643,482, registered on the Principal Register on October 29, 2002 for services in international class 36; and
· United States registered service mark E*TRADE FINANCIAL, registration number 2,729,546, registered on the Principal Register on June 24, 2003 for services in international class 38.
Complainant has an established Internet presence and maintains its principal business on its stock trading platform to which Complainant’s domain name <etrade.com> resolves.
The disputed domain name, <etradeaccounts.com>, was registered on May 26, 2022, and resolves to a website purporting to present links to third-party websites offering investment advice.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
The Registrar has confirmed that Respondent, who availed of a privacy facility to conceal his or her name on the published WhoIs, is the registrant 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”).
Complainant has provided uncontested evidence to prove that it has rights in the E*TRADE and ETRADE.COM, service marks, established by its ownership of its portfolio of trademark- and service mark- registrations described above and extensive use of the mark in its financial services business and in particular on its stock trading platform.
The disputed domain name <etradeaccounts.com>, consists of Complainant’s E*TRADE mark, albeit without the asterisk, in combination with the element “accounts” and the generic Top Level Domain (“gTLD”) extension.
It also consists of the ETRADE.COM, with the element “accounts” inserted between the elements “ETRADE” and “.COM”,
The element “accounts” is descriptive of an activity in all commercial enterprises and so its presence in the disputed domain name adds no distinguishing character so as to prevent a finding that the disputed domain name is confusingly similar to both of Complainant’s E*TRADE and ETRADE.COM, service marks
The omission of the asterisk and the presence of the gTLD extension <.com> do not prevent a finding that the disputed domain name is confusingly similar to the E*TRADE service mark as the asterisk is not a character permitted in a domain name and has no particular meaning in context.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s E*TRADE mark.
This Panel finds therefore that the disputed domain name <etradeaccounts.com> is confusingly similar to both of the E*TRADE and ETRADE.COM, service marks.in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· upon information and belief, neither ETRADE nor the disputed domain name is part of Respondent’s name;
· additionally, upon information and belief, prior to the time Complainant established rights in its E*TRADE and ETRADE.COM service marks Respondent did not actually engage in any business or commerce under the name ETRADE or the disputed domain name and Respondent was not commonly known by that name;
· Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the E*TRADE and ETRADE.COM service marks or the disputed domain name;
· Respondent has no relationship whatsoever with Complainant;
· Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use;
· the screen capture of the web page to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that the disputed domain name resolves to a “parking” website, which site contains links to third-party businesses offering financial services related to Complainant’s services;
· such parking and linking does not constitute a legitimate or bona fide use of the disputed domain name;
· Respondent’s use of the confusingly similar disputed domain name in connection with the offering of services that are identical and/or closely related to those services offered by Complainant does not constitute a legitimate or bona fide use of a domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has made out a prima facie, uncontested case that it has a long established reputation in the use of the E*TRADE and ETRADE.COM service marks and has built a strong reputation in these marks particularly in its shares trading platform.
It is improbable that the registrant of the disputed domain name was unaware of Complainant, its name, trading platform, and the marks on which Complainant relies when the disputed domain name was chosen and registered.
The disputed domain name resolves to a web page that purports to provide links to third party websites. Respondent may or may not be generating pay-per-click revenue by these links, but on the balance of probabilities Respondent has a financial interest in maintaining the web page to which the disputed domain name resolves.
Respondent must be aware that its use of the disputed domain name is likely to cause confusion among Internet users and that by hosting its web page, Respondent is on the balance of probabilities, confusing and misleading Internet users who are seeking Complainant’s well-established business and diverting their Internet traffic to Respondent’s website where they are presented with offers of financial service information that is competing with Complainant’s business.
Given the confusingly similar character of the disputed domain name, such use to attract, confuse, and misdirect Internet traffic constitutes use of the disputed domain name in bad faith.
This Panel finds therefore that Respondent’s use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s web page, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web page and links to financial services purported to be offered by the Respondent on its web page, constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This Panel also agrees with Complainant’s submission that that even if Respondent does not receive click-through fees and it was the Registrar, and not Respondent, who, pursuant to the “parking” agreement between Respondent and the Registrar, generated the links to third party websites, Respondent still acted in bad faith because he or she allowed the disputed domain name to be used to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with the disputed domain name and the web page to which it resolves.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etradeaccounts.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 5, 2022
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