E*Trade Financial Holdings, LLC v. Jerry Hughes
Claim Number: FA2212002022524
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Jerry Hughes (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--etrde-zqa.org>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on December 2, 2022; Forum received payment on December 2, 2022.
On December 2, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <xn--etrde-zqa.org> 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 December 5, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@xn--etrde-zqa.org. Also on December 5, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant provides digital financial services for investors, traders, and other various groups. Complainant asserts rights in the E*TRADE trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,985,826, registered July 9, 1996). Respondent’s <etráde.org> domain name is identical or confusingly similar to Complainant’s E*TRADE trademark as it incorporates the trademark in a misspelled form, replacing the letter “a” with the Unicode character “á”, eliminates the asterisks in Complainant’s trademark, and adds the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <etráde.org> domain name. Complainant has not authorized or licensed Respondent to use its E*TRADE trademark, nor is Respondent commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods services nor any legitimate noncommercial or fair use. Rather, Respondent uses the similarity of the disputed domain names to divert users to its own webpage where it attempts to pass off as Complainant. Also, Respondent’s registration and use of the <etráde.org> domain name is an example of typosquatting.
Respondent registered and uses the <etráde.org> domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name to impersonate Complainant and disrupt Complainant’s business, attracting users with a false impression of association with Complainant. Similarly, Respondent uses the disputed domain name to take advantage of the goodwill and brand recognition associated with Complainant’s trademark and creates initial interest confusion. Further, Respondent’s use of the common misspelling of Complainant’s E*TRADE trademark constitutes typosquatting. Finally, Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Internationalized Domain Name
The domain name in dispute is <xn--etrde-zqa.org> which is an internationalized domain name (“IDN”) that, with a PUNYCODE translation, is identified as <etráde.org>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the <xn--etrde-zqa.org> properly in the <etráde.org> domain name, it first had to encode it into the <xn--etrde-zqa.org> domain name.
IDNs and their PUNYCODE translations are equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <tętu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar).
The Panel finds that the <etráde.org> domain name is the same as its PUNYCODE translation, <xn--etrde-zqa.org>, for purposes of this proceeding. The Panel will therefore hereafter refer to <etráde.org> as the disputed domain name.
Complainant’s trademarks and the Disputed Domain Name
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,985,826 E*TRADE (word), registered on July 9, 1996 for services in Intl Class 36;
No. 2,220,629 E TRADE (fig), registered on January 26, 1999 for services in Intl Class 36;
No. 2,479,300 E TRADE (fig), registered on August 21, 2001 for services in Intl Classes 36, 38, 41 and 42;
No. 2,574,989 ETRADE.COM (word), registered on June 4, 2002 for services in Intl Class 36;
No. 2,643,482 E*TRADE FINANCIAL (word), registered on October 29, 2002 for services in Intl Class 36; and
No. 2,729,546 E*TRADE FINANCIAL (word), registered on June 24, 2003 for services in Intl Class 38.
The disputed domain name <etráde.org> was registered on November 16, 2022.
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 Complainant claims rights in the E*TRADE trademark through its registration with the USPTO. Registration with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).”). Complainant provides copies of its registration in the E*TRADE trademark with the USPTO (e.g. Reg. 1,985,826, registered July 9, 1996). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues the <etráde.org> domain name is identical or confusingly similar to Complainant’s E*TRADE trademark. Under Policy ¶ 4(a)(i), incorporating a protected trademark in its entirety in a misspelled form is generally not sufficient in distinguishing a domain name from a protected trademark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT trademark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”). Further, the omission of the asterisk in Complainant’s E*TRADE trademark is irrelevant as asterisks are not permitted in domain names. Past panels have found that the removal of punctuation is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i). See Academy, Ltd., d/b/a Academy Sports & Outdoors v Transure Enterprise Ltd c/o Host Master, FA 1309191 (Forum Mar. 9, 2010) (holding that “the deletion of the “+” symbol creates a confusing similarity” between respondent’s <academysports.com> and complainant’s ACADEMY SPORTS + OUTDOORS). Finally, the addition of the gTLD “.com” is generally considered irrelevant when determining whether a disputed domain name is identical or confusingly similar to another’s trademark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Respondent’s <etráde.org> domain name incorporates the entirety of the E*TRADE trademark in a misspelled form, omitting the asterisks and replacing the letter “a” with the Unicode letter “á”. Further, the disputed domain name adds the “.org” gTLD. Therefore, the Panel find that Respondent’s domain name is at least confusingly similar to Complainant’s trademark pursuant to Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent lacks rights or legitimate interests in the <etráde.org> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the E*TRADE trademark. Information on the record that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). Further, use of a famous trademark in a disputed domain name supports a finding that a respondent is not commonly known by a disputed domain name. See Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”). Finally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 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).”). In the present case, information on the record indicates that Respondent is not commonly known as “ETRADE”. Further, Complainant’s E*TRADE trademark is widely used and may be considered famous. Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s E*TRADE trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain named under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <etráde.org> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use, as Respondent uses the confusingly similar domain name to impersonate Complainant and redirect users to its own webpage. A respondent’s use of confusingly similar domain name to divert Internet users seeking the complainant is clearly not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”). Further, a respondent’s use of a confusingly similar domain name to pass off as a complainant is not considered a bona fide offering of goods and services or legitimate noncommercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Respondent fully incorporated the E*TRADE trademark in the <etráde.org> domain name to benefit from the goodwill associated with Complainant’s trademark and attempts to harm and confuse Complainant’s current and potential customers. Further, Complainant attached evidence that Respondent uses the disputed domain name’s resolving webpage to impersonate Complainant through the use of its logos. Therefore, the Panel finds that Respondent uses the disputed domain name to pass off as Complainant and divert Complainant’s consumers, and the Panel thereby find that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and (iii).
Finally, Complainant asserts that Respondent lacks rights or legitimate interests in the <etráde.org> domain name because Respondent engages in typosquatting. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Here, Respondent has replaced the letter “a” in the E*TRADE mark with the Unicode letter “á”. Furthermore, the disputed domain is essentially identical to Complainant’s E*TRADE trademark, except for the omission of the asterisks. Therefore, the Panel find that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent uses Complainant’s E*TRADE trademark in the <etráde.org> domain name with intent to divert and attract Internet users in bad faith. A respondent’s use of a domain name that is obviously connected to a complainant’s widely used trademark indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). Additionally, use of a disputed domain name to impersonate a Complainant supports a finding of bad faith registration and use. See Russell & Bromley Limited v. Li Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). As noted above, the Complainant has provided screenshots of the web site connected to the disputed domain name, which attempts to pass off as Complainant through the use of Complainant’s trademark and logo. Respondent also incorporates Complainant’s E*TRADE trademark in whole in the disputed domain name, presumably to attract and divert Internet users. The Panel therefore find that Respondent registered and uses the <etráde.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent uses the confusing similarity of the <etráde.org> domain name to Complainant’s well-known E*TRADE trademark in order to generate initial interest confusion. A disputed domain name that incorporates the entirety of a well-known protected trademark may evidence bad faith use. See London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”). Complainant’s E*TRADE trademark is well-known and associated with Complainant. Further, Respondent’s <etráde.org> domain name incorporates the entirety of Complainant’s protected trademark. Therefore, the Panel find that Respondent’s <etráde.org> domain name is obviously connected to Complainant’s well-known trademark, and is used to generate initial interest confusion in bad faith.
Complainant further argues that Respondent’s registration and use of the <etráde.org> domain name constitutes opportunistic bad faith as the domain name is obviously connected to Complainant’s trademark. Past panels have found evidence of opportunistic bad faith registration and use where it is impossible for the respondent to make any active use of the disputed domain name without creating a false impression of association with the complainant. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). Respondent incorporates the entirety of Complainant’s E*TRADE trademark in the disputed domain name. Thus, the Panel find that Respondent’s registration and use of the disputed domain name constitutes opportunistic bad faith pursuant to Policy ¶ 4(a)(iii).
In addition, Complainant argues that Respondent has registered and uses the <etráde.org> domain name in bad faith because it engages in typosquatting which may be evidence of bad faith under Policy ¶ 4(a)(iii). See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Respondent has replaced the letter “a” in the E*TRADE trademark with the Unicode letter “á”. Furthermore, the disputed domain is essentially identical to Complainant’s E*TRADE mark, except for the omission of the asterisks. Therefore, the Panel find that Respondent registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered and uses the <etráde.org> domain names with actual and constructive knowledge of Complainant’s rights in the E*TRADE mark. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.”). However, actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel recall that Complainant’s registered E*TRADE trademark is incorporated in whole in the disputed domain name. Therefore, the Panel find that Respondent had actual knowledge of Complainant’s rights in the trademark, thus acting in bad faith under 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 <xn--etrde-zqa.org> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 9, 2023
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