E*Trade Financial Holdings, LLC v. Ole Kristiansen / ETradeBooksOnline
Claim Number: FA2303002035413
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff, of Cowan, Liebowitz & Latman, P.C., USA. Respondent is Ole Kristiansen / ETradeBooksOnline (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etradebooks.com>, registered with Tucows Domains 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 10, 2023; Forum received payment on March 10, 2023.
On March 13, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <etradebooks.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@etradebooks.com. Also, on March 15, 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.
A timely Response was received and determined to be complete on March 16, 2023.
On March 17, 2023, Complainant filed an “Additional Statement.”
On March 17, 2023, Respondent filed a “counter-response” to Complainant’s additional statement.
On March 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey M. Samuels 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant E*Trade Financial Holdings, LLC originated as a platform that allowed retail investors to trade stocks online. Today, Complainant provides a suite of digital financial services for investors, traders, financial advisors, stock plan participants, and stock plan administrators. Complainant employs more than 4,100 individuals and has 30 retail branches across the United States.
Complainant owns a number of U.S. trademark registrations[i] for marks containing or comprising E*TRADE and E*TRADE.COM, as used in connection with financial and related services. Complainant and its predecessors have used the E*TRADE marks since at least 1992.
A Google® search for the terms “E*Trade” and “finance” yielded over 494 million results. As set forth in Exhibit 3 to the Amended Complaint, the search results refer to Complainant as E*TRADE and E-Trade and under the heading “People also ask” include entries such as “Why is Etrade bad?”, “Is Etrade good for beginners?” and “How much does it cost to open an account with ETrade?”
Complainant also owns the domain name ETRADE.COM, and numerous variations thereof. Complainant offers numerous articles, guides, and other educational materials about investing, electronic trading, and financial services via its www.etrade.com website.
Complainant submits that the disputed domain name, etrade.books.com, “must be deemed virtually identical or confusingly similar to Complainant’s registered marks.” It contends that neither the addition of the generic or descriptive term “books” nor the addition of the gTLD “.com” and the elimination of the asterisk from Complainant’s marks obviates the confusing similarity.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Upon information and belief, Complainant contends that, prior to the time Complainant established rights in its E*TRADE 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.
Complainant further asserts that Respondent is not a licensee of Complainant nor has Respondent ever been authorized by Complainant to register or use the E*TRADE marks or the disputed domain name.
Complainant also maintains 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. Complainant points out that the disputed domain name resolves to a website that purports to offer, in exchange for payment, books and training course about investing, electronic trading and finance under the company name and mark “eTradeBooksOnline.”
With respect to the issue of “bad faith” registration and use, Complainant argues that, given the long and well-established reputation of its E*TRADE marks, “[t]here can be no doubt that Respondent was aware of Complainant’s ETRADE 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.” According to Complainant, 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 ETRADE Marks.”
Complainant also contends that Respondent’s request for $2,000 in fees to transfer the domain name to Complainant, a price that, upon information and belief, far exceeds the registration costs of the disputed domain name, is “strong evidence” of bad faith.
B. Respondent
Respondent, in his Response, acknowledges ETrade’s public recognition, but labels as “unfounded and unreasonable” Complainant’s allegations that Respondent’s registration and use of the domain name infringes on Complainant’s trademark.
Respondent argues that the term “etrade” is a generic term widely used in the financial services industry, contending that it is a shortened form of “electronic trade” which describes online trading platforms and related services. “Therefore, it is unreasonable for one brand to claim exclusive ownership of a term that describes a method of conducting trade electronically. Furthermore, I have added ‘books’ at the end of etrade, which distinguishes my domain name from ETrade’s trademark.”
Respondent also complains that Complainant’s demand to transfer the disputed domain name at no cost is exploitative and represents a “clear attempt at bullying and intimidation, which is a form of corporate fraud.” Respondent notes that Complainant is a large corporation with significant resources, “while I am a small business owner with limited resources.” According to Respondent, “[i]t is unfair for ETrade to demand the transfer of the domain name at no cost when it has value, both as a generic term and as a domain name with potential for commercial use.”
Further, Respondent indicates that while the website associated with the disputed domain name was intended to sell electronic books on trading, the site never launched due to circumstances beyond his control. Noting that he has received multiple offers from interested buyers, “all of whom are willing to pay a significant amount of money for the domain name,” Respondent expresses his willingness to sell the disputed domain name for a “reasonable” price of $2,000, “which is well below market value….”
C. Additional Submissions
In its Additional Statement, Complainant notes that Respondent presented no evidence in support of the assertion that “etrade” is a generic term.
Complainant further argues that while Respondent claims he never “launched” his site, the evidence proves otherwise. Respondent also admits that he offered to sell the disputed domain name to Complainant for $2,000, “an amount that far exceeds the cost of registering a .com domain name,…”
With respect to Respondent’s allegations regarding “bullying and intimidation,” Complainant points out that, prior to the filing of the UDRP complaint, Complainant requested that Respondent cancel, not transfer, the registration. Moreover, even after the complaint was filed, Complainant was still willing to accept cancellation of the domain. According to Complainant, “Complainant has no commercial interest in the disputed domain name and only filed this proceeding to protect its trademark rights and prevent others from causing consumer confusion and usurping Complainant’s goodwill in its trademarks. Showing his true motives, Respondent refused to cancel the registration … and increased his monetary demand to $20,000, which is undeniable evidence of bad faith.” (emphasis in original)”
Respondent, in his counter-response, reiterates that the website associated with the disputed domain name was never launched officially and, while it is online, no advertisements appear at the site and the site has not generated any sales. “It is important to note that I am not using the domain name commercially at the moment and do not plan to do so in the future.”
“In conclusion,” Respondent asserts, “I believe that I have a legitimate right to the domain name and that my use of it is not in bad faith. I am open to further discussion regarding a reasonable sale of the domain name, but I will not simply give it away for zero dollars….”
The Panel finds that: (1) the disputed domain name is confusingly similar to the E*TRADE marks; (2) Complainant has rights in such marks; (3) Respondent has no rights or legitimate interests in the disputed domain name; and (4) the disputed domain name was registered and is being used in bad faith.
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.
The Panel determines that the disputed domain name is confusingly similar to the E*TRADE marks. It is well-settled that the addition of generic terms, such as books, as well as the gTLD “.com,” to a disputed domain name does not avoid a finding of confusing similarity. 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.”). The elimination of the asterisk found in Complainant’s marks is also without significance, particularly in view of the fact that domain names cannot include an asterisk. In the opinion of the Panel, Complainant’s mark is recognizable within the disputed domain name, which is the general test for a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, §1.7 (hereinafter WIPO Jurisprudential Overview 3.0).
The Panel finds that Complainant has rights in the E*TRADE marks. Where, as here, the evidence establishes that a complainant owns a national trademark registration, the threshold requirement of having trademark rights for purposes of standing to file a UDRP case is met. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). See, also, WIPO Jurisprudential Overview 3.0, §1.2.1.
While Respondent argues that the term “etrade” is generic, the Panel notes that, with the exception of one of Complainant’s U.S. trademark registrations[ii], each of the registrations is for the mark E*TRADE or E*TRADE.COM and not for “etrade.”
Rights or Legitimate Interests
The Panel finds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name.
To the extent that Respondent argues that his use of etrade is permissible because such term is generic, the Panel notes that no evidence was submitted in support of such claim. Moreover, Complainant’s Exhibit 3, as noted above, indicates that the term “etrade” is used to refer to Complainant.
The evidence, as set forth in Exhibit 8 to Complainant’s Amended Complaint, indicates that the disputed domain name resolves to a site that offers for sale books and courses about investing, trading, and finance in general.
As noted above, the evidence indicates that Complainant also offers numerous articles, guides, and other educational materials about investing, electronic trading, and financial services via its www.etrade.com website.
Under such circumstances, it cannot be found that Respondent is using the disputed domain name in connection with any bona fide offering of goods or services or for any 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.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
The Panel concludes that the disputed domain name was registered and is being used in bad faith. Respondent, in his Response, acknowledges Complainant’s public recognition. Thus, as Complainant maintains, “[t]here can be no doubt Respondent was aware of Complainant’s E*TRADE Marks when he … chose and registered the disputed domain name.”[iii]
As noted above, the disputed domain name is confusingly similar to Complainant’s E*TRADE marks and resolves to a website that offers for sale products and services that relate to the same industry in which Complainant operates. That Respondent may not have realized any revenue from his venture[iv] does not detract from the commercial nature of its website. Respondent concedes that his etradebooks.com website was intended to sell electronic books on trading but asserts that it was never “launched.” It is not clear to the Panel what Respondent means by use of the word “launched.” In any case, the Panel’s visit to the disputed website indicates that the site, as described in Exhibit 8 to the Amended Complaint, remains accessible to Internet users.
In view of the above, the Panel finds that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site or of the products found at such site, within the meaning of paragraph 4(b)(iv) of the Policy. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also CNA Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etradebooks.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: April 6, 2023
[i] See U.S. Trademark Registration Nos. 1985826; 2220629; 2479300; 2574989; 2643482; and 2729546.
[ii] See U.S. Trademark Registration No. 2574989 for the mark ETRADE.COM.
[iii] Exhibit 7 to Complainant’s Complaint indicates that the disputed domain name was registered in January 2023, more than 30 years after Complainant’s first use of its E*TRADE marks..
[iv] In his Response, Respondent indicates that the website in issue “has not generated any significant traffic or revenue” which leaves open the possibility that it has generated some traffic or revenue.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page