Morgan Stanley Domestic Holdings, Inc. v. Dimar Manigao
Claim Number: FA2308002057390
Complainant is Morgan Stanley Domestic Holdings, Inc. (“Complainant”), USA, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Dimar Manigao (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etraderwave.com>, 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 Forum electronically on August 14, 2023; Forum received payment on August 14, 2023.
On August 15, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <etraderwave.com> 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 August 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@etraderwave.com. Also on August 16, 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 September 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.
On August 21, 2023, Respondent sent an email to Complainant by copying Forum in stating that i) he acquired the disputed domain name legally; ii) he has created a website with a unique identity; iii) the website is a networking website that is only available to invited members; and iv) he is open to negotiating a settlement with Complainant. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5). The Panel finds that Respondent’s communication to Complainant is not a legitimate Response in compliance with ICANN Rule 5, and thus it decides not to consider Respondent’s communication to Complainant.
A. Complainant
i) Complainant, Morgan Stanley Domestic Holdings, Inc., offers financial, investment, and wealth management services under the ETrade name. Complainant has rights in the E*TRADE mark based upon 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 confusingly similar to Complainant’s mark as it contains the E*TRADE mark in its entirety, merely adding the generic and/or descriptive term “wave,” the letter “r,” and the generic top-level domain (“gTLD”) “.com” and removing the asterisk “*” from the mark to form the disputed domain name.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s E*TRADE mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain name to offer purported financial services that compete with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered and uses the disputed domain name to offer purported financial services that compete with Complainant. Furthermore, Respondent registered and uses the disputed domain name to create initial interest confusion in Internet users. Respondent registered and uses the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the E*TRADE mark.
B. Respondent
Respondent did not submit a Response in this proceeding. Respondent sent an email to Complainant by copying Forum in as addressed in the “Preliminary Issue: Deficient Response” Section above.
1. The disputed domain name was registered on May 9, 2023.
2. Complainant has established rights in the E*TRADE mark based upon registration with the USPTO (e.g., Reg. No. 1,985,826, registered July 9, 1996).
3. The disputed domain name’s resolving website prominently displays “eTraderWave” mark which is confusingly similar to Complainant’s E*TRADE mark, which purports to offer financial trading services, that is closely related to services offered by Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 upon registration with the USPTO (e.g., Reg. No. 1,985,826, registered July 9, 1996). Registration of a mark with the USPTO demonstrates rights in such a mark for the purposes of Policy ¶ 4(a)(i). Complainant has provided evidence of registration of the E*TRADE mark with the USPTO. Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant contends the disputed domain name <etraderwave.com> is confusingly similar to Complainant’s mark as it contains the E*TRADE mark in its entirety, merely adding the generic and/or descriptive term “wave,” the letter “r,” and the generic top-level domain (“gTLD”) “.com” and removing the asterisk “*” from the mark to form the disputed domain name. The addition of a generic and/or descriptive term and a gTLD to a complainant’s mark does not sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). 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 or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also 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.”).
Additionally, the addition of the letter “r” and a gTLD does not sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i).
See E*Trade Financial Holdings, LLC v. mohammad shihab, FA 002571 (Forum Jul. 26, 2022) (addition of letter “r” to complainant’s ETRADE Marks did not obviate confusion from domain name ETRADER.NET). Moreover, the removal of the asterisk “*” does not alter the fact that a name is identical to a mark. See 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"). The Panel thus finds that the disputed domain name is 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 claims Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not licensed or authorized to use Complainant’s E*TRADE mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The unmasked WHOIS information for the disputed domain name lists the registrant as “Dimar Manigao.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent uses the disputed domain name to offer purported financial services that compete with Complainant. The use of a disputed domain name to offer goods and/or services that compete with a complainant’s business is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). 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).”). Complainant provides screenshots of the disputed domain name’s resolving website which purports to offer financial trading services, that is closely related to the services offered by Complainant. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
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 asserts Respondent registered and uses the disputed domain name in bad faith as Respondent registered and uses the disputed domain name to offer purported financial services that compete with Complainant. The use of a disputed domain name to offer competing services and/or goods is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Bank of America, National Association v. Marcos Alexis Nelson, FA 1621654 (Forum July 2, 2015) (findings that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where it used the disputed domain name to promote its business in real estate and financial services, which were services that competed with the services the complainant offered). The Panel recalls that Complainant provides screenshots of the disputed domain name’s resolving website, which prominently displays “eTraderWave” mark which is confusingly similar to Complainant’s E*TRADE mark and purports to offer financial trading services, that is closely related to the services offered by Complainant. As such, the Panel finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent registered and uses the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the E*TRADE mark. Complainant points to its prior use of the E*TRADE mark prior to Respondent’s registration of the disputed domain name; Respondent’s use of a misspelling of Complainant’s ETRADE mark in the disputed domain name; and the fame of the E*TRADE mark around the world. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the E*TRADE mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain 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 <etraderwave.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: September 7, 2023
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