E*Trade Financial Holdings, LLC v. hello world
Claim Number: FA2302002033628
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is hello world (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-tradecapitalfxtm.com>, registered with Gandi SAS.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 27, 2023; Forum received payment on February 27, 2023.
On March 3, 2023, Gandi SAS confirmed by e-mail to Forum that the <e-tradecapitalfxtm.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 March 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2023 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@e-tradecapitalfxtm.com. Also on March 6, 2023, 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 April 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, E*Trade Financial Holdings, LLC, provides various financial services.
Complainant asserts rights in the E*TRADE Marks based upon registration with the United States Patent and Trademark Office (“USPTO”).
The <e-tradecapitalfxtm.com> domain name is confusingly similar to Complainant’s marks in spite of the addition of the descriptive terms “capital”, “fx” (a common abbreviation for “foreign exchange”) and “tm” (a common abbreviation for “trademark”). The addition of the generic top level domain (“gTLD”) “.com”, the use of a hyphen, and the elimination of the asterisk from Complainant’s Marks also fails to obviate the confusing similarity.
Respondent has no rights or legitimate interests in the <e-tradecapitalfxtm.com> domain name. Respondent is not commonly known by the at-issue domain name. Respondent is not using the at-issue domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Rather, Respondent uses the domain name to pass itself off as Complainant. Respondent uses the at-issue domain name to offer fake services. Respondent uses the at-issue domain name to attract consumers for commercial gain. Respondent uses the domain name to take advantage of the notoriety of Complainant’s marks and to create confusion.
Respondent registered and uses the <e-tradecapitalfxtm.com> domain name in bad faith. Respondent uses the at-issue domain name to take advantage of Complainant’s well-known marks to cause initial interest confusion and disrupt Complainant’s business. Respondent uses the domain name to pass off as Complainant. Respondent is attracting consumers for commercial gain. Respondent uses the at-issue domain name to offer fake services. Additionally, Respondent had actual knowledge of Complainant’s rights in E*TRADE prior to registration of the at-issue domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in its E*TRADE mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in E*TRADE.
Respondent uses the at-issue domain name to impersonate Complainant and to address a website offering bogus financial 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registration for E*TRADE is sufficient to demonstrate Complainant’s rights in a mark for the purposes of Policy ¶ 4 (a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The at-issue domain name contains Complainant’s E*TRADE mark with the mark’s domain name impermissible asterisk replaced by a hyphen, followed by the suggestive terms “capital,” “fx,” and “tm,” and with all followed by the “.com” top-level. The differences between <e-tradecapitalfxtm.com> and Complainant’s E*TRADE trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <e-tradecapitalfxtm.com> domain name is confusingly similar to Complainant’s E*TRADE trademark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also, Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
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 the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “hello world” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either the <e-tradecapitalfxtm.com> domain name or by E*TRADE. The Panel therefore concludes that Respondent is not commonly known by the <e-tradecapitalfxtm.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent uses the <e-tradecapitalfxtm.com> domain name to address a website pretending to be affiliated with Complainant that purports to offer services that are identical or closely related to those services offered by Complainant. The website in fact offers fake financial services under the banner E-TRADE FX. Respondent’s use of <e-tradecapitalfxtm.com> in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also, Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the at-issue domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also, Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA 1191541 (Forum July 2, 2008) (the domain name’s website offering of fake educational services was not a legitimate use of at-issue domain name).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the <e-tradecapitalfxtm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent uses <e-tradecapitalfxtm.com> to pass itself off as Complainant and address a website offering phony financial services that are similar to services actually offered by Complainant. Respondent’s use of the domain name is disruptive to Complainant’s business and reveals Respondent’s attempt to capitalize on the confusion it created between the at-issue domain name and Complainant’s trademark that falsely suggests that the domain name and its relevant website are sponsored by, or affiliated with, Complainant. Respondent’s use of the domain name as discussed above indicates Respondent’s bad faith pursuant to 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 at-issue 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); see also, Access Res. Servs., Inc. v. Individual, FA 97750 (Forum Aug. 13, 2001) (“Respondent's registration and use of the <misscleosucks.com> domain name to promote competing psychic services, assumedly for commercial gain, by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also, Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA 1191541 (Forum July 2, 2008) (website offering fake educational services was not a legitimate use of the at-issue domain name); see also, Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith).
Moreover, Respondent had actual knowledge of Complainant’s rights in the E*TRADE mark when it registered <e-tradecapitalfxtm.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of <e-tradecapitalfxtm.com> to pass off as Complainant as discussed elsewhere herein. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-tradecapitalfxtm.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 4, 2023
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