DECISION

 

Morgan Stanley Domestic Holdings, Inc. v. Michael Bryce

Claim Number: FA2310002065248

 

PARTIES

Complainant is Morgan Stanley Domestic Holdings, Inc. ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Michael Bryce ("Respondent"), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <etrade-invest.org> ("Disputed Domain Name"), registered with HOSTINGER operations, UAB.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 6, 2023; Forum received payment on October 6, 2023.

 

On October 9, 2023, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <etrade-invest.org> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 October 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@etrade-invest.org.

 

Also on October 9, 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 October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights to the E*TRADE trademark by its ownership and use of the mark by itself and its afficiated corporations providing financial services online, which include a suite of digital financial services for investors, traders, financial advisors, stock plan participants, and stock plan administrators.

 

Complainant claims to have a substantial business employing thousands of individuals and providing financial services to millions of consumers, and in support of this assertion has provided a screen capture of its primary website, located at <www.us.etrade.com>, which is used by Complainant to promote its services and provide access to its services for its clients.

 

Complainant submits that the Disputed Domain Name is identical or confusingly similar to its E*TRADE mark, as it incorporates Complainant's mark in its entirety See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant's mark in full).

 

It is contended that the addition of the generic or descriptive term "invest" does not obviate the confusing similarity. See Empowered Mmedical 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)").

 

Neither does the use of a hyphen, and the elimination of the asterisk from Complainant's E*TRADE mark fail to obviate the confusing similarity. 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); Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) ("[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity."). Indeed, domain names cannot use asterisks.

 

Furthermore, Complainant argues that the generic Top Level Domain ("gTLD") extension <.org> does not prevent a finding that the Disputed Domain Name is confusingly similar to Complainant's 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 E*TRADE 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 mark, Respondent did not actually engage in any business or commerce under the name E*TRADE 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 the E*TRADE mark or the disputed domain name. Indeed, Respondent has no relationship whatsoever with Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).

 

Furthermore, Complainant submits 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 refers to a screen capture of the website to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint, and submits that the website prominently displays the name and mark "E-TRADE INVESTMENT"—which is confusingly similar to Complainant's E*TRADE mark—and includes a logo in which the term "E-TRADE" is displayed on a separate line above the term "INVESTMENT," in an apparent effort to accentuate the term "E-TRADE." 

 

In addition, Respondent's website purports to offer financial trading services that are identical or closely related to the services offered by Complainant, all ostensibly in an effort to make consumers believe that Respondent's site is affiliated with Complainant. As discussed further below, the site appears to be offering fake financial services.

 

Complainant adds that upon information and belief, Respondent is thus using the Disputed Domain Name to impersonate Complainant. Using the Disputed Domain Name to impersonate Complainant and cause consumer confusion with fake investments is not a legitimate purpose or bona fide offering of goods and services under the Policy. See Morgan Stanley Domestic Holdings, Inc. v. Thomas zhed, FA 2060168 (Forum Sept. 26, 2023) (use of disputed domain name <ETRADE-INVEST.COM>, which resolved to an identical webpage for "E-TRADE INVESTMENT" and offered services that competed with Complainant's business, was found not to be a bona fide offering of goods and services).

 

Moreover, Complainant argues that upon information and belief, the financial services offered via Respondent's website are fake. The exhibited screen capture shows that the "Home" and "About" pages of Respondent's website claim that "E-Trade Investment is a registered UK Company, it was launched in October 2015." 

 

Those pages additionally display a purported certificate of incorporation from the UK Companies House; the certificate is dated October 14, 2015, and lists a company name of E-TRADE INVESTMENT and a registration number of 10876547.

 

However, Complainant submits that a search of the UK Companies House online register for active companies entitled E-TRADE INVESTMENT yielded no results, and a search for the registration number 10876547 yielded a company name that was registered in 2017 and does not contain the terms "E-TRADE" or "INVESTMENT." 

 

Complainant contends that the offering of fake services is not a legitimate or bona fide use of a domain name. See 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 domain name).

 

Complainant adds that even in the absence of impersonation, the use of a confusingly similar 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 confusingly 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 (Forum Nov. 19, 2015) (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 adds that its E*TRADE mark is so well-known that the only plausible inference that can be derived from Respondent's registration of the Disputed Domain Name is that Respondent registered the Disputed Domain Name to take advantage of and intentionally trade on the goodwill associated with Complainant's E*TRADE mark, which is not a legitimate or bona fide use of a domain name. See Drexel University v. David Brouda, D2001-0067 (WIPO Mar. 20, 2001) ("rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant").

 

Complainant further submits that such use of the Disputed Domain Name also causes "initial interest confusion," which is disruptive to Complainant, its business, and goodwill in the E*TRADE mark and argues that this also is not a legitimate use of a domain name or bona fide offering of goods and services. See Retail Royalty Co. and AE Direct Co LLC v. A K, FA 1580871 (Forum Oct. 31, 2014) (no legitimate interest or bona fide offering with respect to domain name that caused initial interest confusion).

 

Lastly in this regard, Complainant argues that Respondent does not have any legitimate rights in the Disputed Domain Name given that the prior use and registration of Complainant's E*TRADE mark by Complainant and its affiliates and predecessors-in-interest gave Respondent actual, or at a minimum constructive, knowledge of such use and registration. See Morgan Stanley v. Chan, FA 244123 (Forum Apr. 23, 2004) (the respondent likely had knowledge of the complainant's MORGAN STANLEY marks prior to registration of domain name at issue due to complainant's "long-standing use and fame" of marks, and the fact that marks were registered with USPTO provided constructive notice to the respondent).

 

Complainant next alleges that the Disputed Domain Name was registered and is being used in bad faith, arguing that it clearly is more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant's E*TRADE mark.

 

Complainant argues that it has a long and well-established reputation in the E*TRADE mark through its exclusive use in the financial and investment services industries. There can be no doubt that Respondent was aware of Complainant's ETRADE Marks when he chose and registered the Disputed Domain Name, and in fact chose the Disputed Domain Name because it was confusingly similar to Complainant's well-known mark. Complainant argues that Respondent intended to capitalize on that confusion, which alone constitutes evidence of bad faith use and registration. See Disney Enters., Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM).

 

Complainant adds that its E*TRADE mark is 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 mark. See Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant's well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith).

 

Furthermore, by causing initial interest confusion, Respondent's use and registration of the disputed domain name disrupts 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).

 

Complainant adds that by ostensibly using the Disputed Domain Name to impersonate Complainant, Respondent seeks to falsely suggest that it is somehow endorsed by or affiliated with Complainant. Such false association and passing off in violation of Complainant's intellectual property rights is further evidence of bad faith use and registration. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that disputed domain name was registered and used in bad faith where respondent hosted a website that "duplicated Complainant's mark and logo, giving every appearance of being associated or affiliated with Complainant's business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark").

 

It is further contended that in the absence of impersonation, the use of a confusingly similar domain name in connection with Respondent's purported offering of services that are closely related to those services offered by Complainant under a name and mark confusingly similar to Complainant's mark is not a legitimate or bona fide use of a domain name. See FC Online Marketing, Inc. v. Brett Ray, FA 1643100 (Forum Nov. 19, 2015) (use of confusingly similar domain name "to market, for commercial gain, services similar to those of Complainant," was not bona fide or legitimate use).

 

Additionally Complainant argues that Respondent's offering of likely fake services also shows Respondent's bad faith use and registration of the disputed domain name. See 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 domain name).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant with its affiliates owns and maintains an internet platform using the E*TRADE trademark and service mark. The platform allows retail investors to trade stocks online.

 

The evidence adduced shows that members of Complainant's group of companies hold a portfolio of registered trademarks registrations for the E*TRADE mark including the following owned by E*Trade Group Inc. a California Corporation:

·       United States registered service mark E*TRADE, registration number 1,985,826, 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.

 

The following is held by E*TRADE GROUP Inc., a Delaware Corporation:

·       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.

 

The following are held by E*TRADE Financial Holdings LLC, a Dellaware Limited Liability Company:

·       United States registered service mark E*TRADE FROM MORGAN STANLEY (figurative), registration number 6,762,085 registered on the Principal Register on June 14, 2022 for goods and services in international classes 9, 36, and 42;

·       United States registered service mark E*TRADE (figurative), registration number 6,762,086 registered on the Principal Register on June 14, 2022 for goods and services in international classes 9, 36, and 42.

 

Complainant's Internet presence is established by its stock trading platform to which its domain name <etrade.com> resolves.

 

The Disputed Domain Name <etrade-invest.org> was registered on September 6, 2023 and is held by Respondent who has elected to have its identity redacted for privacy on the public WhoIs. The Disputed Domain Name resolves to a website that purports to offer crypto-currency trading, mining and forex trading.

 

There is no information available about Respondent except for that provided in the Complaint, on the Registrar's WhoIs for the Disputed Domain Name, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the Disputed Domain Name for the purposes of this proceeding.

 

The Registrar has confirmed that Respondent, who elected to have his name redacted on the published WhoIs, is the registrant of the Disputed Domain Name.

 

DISCUSSION

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").

 

Identical and/or Confusingly Similar

A.       Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the E*TRADE mark, established by the ownership of the portfolio of trademark and service mark registrations described below and the reputation and goodwill established in the mark by its extensive use by Complainant, its affiliates and predecessor in title.

 

B.       Confusing Similarity

The Disputed Domain Name <etrade-invest.org> consists of Complainant's E*TRADE mark in its entirety, albeit with the omission of the asterisk "*", and the addition of the hyphen, in combination with the generic Top Level Domain ("gTLD") extension <.org>.

 

Complainant's E*TRADE mark is clearly recognizable as the initial, dominant and only distinctive element in the disputed domain name. Neither the omission of the asterisk, nor the addition of the hyphen prevent a finding of confusing similarity between the Disputed Domain Name and Complainant's mark.

 

Similarly, the gTLD extension <.org> does not prevent a finding of confusing similarity because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration.

 

This Panel finds therefore that the Disputed Domain Name is confusingly similar to the E*TRADE mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the 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;

·       upon information and belief, prior to the time Complainant established rights in its E*TRADE mark, Respondent did not actually engage in any business or commerce under the name ETRADE or the disputed domain name;

·       Respondent was not commonly known by the Disputed Domain Name;

·       Respondent is not a licensee of Complainant;

·       Respondent ever been authorized by Complainant to register or use the E*TRADE mark or the Disputed Domain Name;

·       Respondent has no relationship whatsoever with Complainant;

·       the screen capture of the website to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint illustrates that the website prominently displays the name and mark "E-TRADE INVESTMENT", which is confusingly similar to Complainant's E*TRADE mark and includes a logo in which the term "E-TRADE" is displayed on a separate line above the term "INVESTMENT," in an apparent effort to accentuate the term "E-TRADE";

·       in addition, the site purports to offer financial trading services that are identical or closely related to the services offered by Complainant, all ostensibly in an effort to make consumers believe that Respondent's site is affiliated with Complainant;

·       Respondent's website furthermore appears to be offering fake financial services;

·       upon information and belief, Respondent is thus using the disputed domain name to impersonate Complainant and cause consumer confusion with fake investments which is not a legitimate purpose or bona fide offering of goods and services under the Policy;

·       the exhibited screen capture of Respondent's website shows that the "Home" and "About" pages claim that "E-Trade Investment is a registered UK Company, it was launched in October 2015" and displays a purported certificate of incorporation from the UK Companies House; the certificate is dated October 14, 2015, and lists a company name of E-TRADE INVESTMENT and a registration number of 10876547. However, a search of the UK Companies House online register for active companies entitled E-TRADE INVESTMENT yielded no results, and a search for the registration number 10876547 yielded a company name that was registered in 2017 and does not contain the terms "E-TRADE" or "INVESTMENT" ;

·       such offering of fake services is not a legitimate or bona fide use of the Disputed Domain Name;

·       even in the absence of impersonation, the 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 under a name and mark identical or confusingly similar to Complainant's mark is not a legitimate or bona fide use of the Disputed Domain Name;

·       Complainant adds that its E*TRADE mark is so well-known that the only plausible inference that can be derived from Respondent's registration of the Disputed Domain Name is that Respondent registered the Disputed Domain Name to take advantage of, and intentionally trade on the goodwill associated with Complainant's E*TRADE mark, which is not a legitimate or bona fide use of the Disputed Domain Name;

·       furthermore such use of the Disputed Domain Name also causes "initial interest confusion," which is disruptive to Complainant, its business, and goodwill in the E*TRADE mark and is not a legitimate use of a domain name or bona fide offering of goods and services;

·       the prior use and registration of Complainant's E*TRADE mark by Complainant and its affiliates and predecessors-in-interest and such prior use and registration gave Respondent actual, or at a minimum constructive, knowledge of such use and registration.

 

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 the 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.

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the E*TRADE mark dating back as far as 1996, which long predate the registration and first use of the Disputed Domain Name which was registered on September 6, 2023.

 

E*TRADE is a distinctive mark it is most improbable that the Disputed Domain Name <etrade-invest.org> which incorporates the mark in its entirety as its dominant and only distinctive element was chosen for any reason other than its similarity to Complainant's mark.

 

This Panel finds therefore that on the balance of probabilities the Disputed Domain Name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's goodwill and reputation in the E*TRADE mark.

 

In making this finding this Panel is supported by the fact that the uncontested evidence proves that Respondent is using the Disputed Domain Name to resolve to a website that purports to either compete with or impersonate Complainant.

 

The exhibited screen capture shows that Respondent's website purports to offer services identical to Complainant, while extensively using Complainant's mark, albeit with a hyphen replacing the asterisk.

 

Respondent does not attempt to indicate in any way that the website has no association with Complainant and in these circumstances this Panel finds that on the balance of probabilities Respondent is intentionally impersonating Complainant.

 

This is of particular concern given that Complainant is providing retail financial investment services and the evidence shows that Respondent has intentionally posted false information about its identity including a false certificate of incorporation and company number.

 

This Panel finds therefore that by using the Disputed Domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and the services that Respondent purports to offer.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <etrade-invest.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

________________________________________________

 

 

James Bridgeman SC, Panelist

Dated: November 1, 2023