DECISION

 

Morgan Stanley Domestic Holdings, LLC v. Kyoung J Choi

Claim Number: FA2312002075833

PARTIES

Complainant is Morgan Stanley Domestic Holdings, LLC ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Kyoung J Choi ("Respondent"), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <etradeautogrow.com>, registered with OwnRegistrar, Inc..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 19, 2023; Forum received payment on December 19, 2023.

 

On December 26, 2023, OwnRegistrar, Inc. confirmed by e-mail to Forum that the <etradeautogrow.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2024 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@etradeautogrow.com. Also on December 27, 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 January 17, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <etradeautogrow.com> domain name is confusingly similar to Complainant's E*TRADE mark.

 

2.       Respondent does not have any rights or legitimate interests in the <etradeautogrow.com> domain name.

 

3.       Respondent registered and uses the <etradeautogrow.com> domain name in bad faith.

 

B. Respondent does not contest this Complaint.

 

FINDINGS

Complainant operates in the financial services industry and holds a registration for the E*TRADE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,985,826, registered July 9, 1996.)

 

Respondent registered the <etradeautogrow.com> domain name on November 28, 2023, and uses it to pass off as Complainant and phish for users' personal information.

 

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

The Panel finds that Complainant has rights in the E*TRADE mark through its registration with the USPTO. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO).

 

Respondent's <etradeautogrow.com> domain name uses Complainant's E*TRADE mark, eliminates the asterisk, and adds generic terms and the ".com" gTLD.  Under Policy ¶ 4(a)(i), adding a descriptive or generic letter or term is insufficient to distinguish a disputed domain name from the mark it incorporates. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); 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"). Therefore, the Panel finds that Respondent's <etradeautogrow.com> domain name is confusingly similar to Complainant's E*TRADE mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent lacks rights and legitimate interests in the <etradeautogrow.com> domain name, as it is not commonly known by the domain name and Complainant has not authorized or licensed Respondent to use its E*TRADE mark. The WHOIS information identifies Respondent as "Kyoung J Choi". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) ("Here, the WHOIS information lists "er nong wu" as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).")

 

Complainant also argues that Respondent does not use the <etradeautogrow.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant and purport to offer financial services. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business). Complainant provides screenshots of the disputed domain name's resolving website, where Respondent appears to offer competing services, using Complainant's mark and logo, and solicits information from users. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).

 

Complainant contends that Respondent's use of the <etradeautogrow.com> domain name to phish for users' information also demonstrates that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that this is further evidence that Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) ("On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a 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 satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the <etradeautogrow.com> domain name in bad faith by disrupting Complainant's business. Under Policy ¶ 4(b)(iii), using a disputed domain name to offer products or services in competition with a complainant is a disruption of the complainant's business evincing bad faith under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent's use of the disputed domain name to offer competing loan services disrupts Complainant's business under Policy ¶ 4(b)(iii)). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).

 

Complainant argues that Respondent registered and uses the <etradeautogrow.com> domain name in bad faith by diverting users to its website for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to trade on the value of a mark is evidence of bad faith registration and use. See Carey Int'l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) ("[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).")  Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant also contends that Respondent registered the <etradeautogrow.com> domain name with actual knowledge of Complainant's rights in the E*TRADE mark. The Panel agrees, noting Respondent's use of the well-known mark to pass off as and compete with Complainant, and finds further bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) ("This Panel makes that inference; Respondent has actual knowledge of Complainant's mark at the time of domain name registration based on the fame of Complainant's GOOGLE mark and Respondent's use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.")

 

Complainant provides screenshots showing that the disputed domain name resolves to a website that prompts users to enter personal information. The Panel finds that this constitutes phishing and is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) ("[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information.)

 

The Panel finds that Complainant has satisfied 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 <etradeautogrow.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra J. Franklin, Panelist

Dated: January 18, 2024