DECISION

 

Morgan Stanley Domestic Holdings, LLC v. Jan Everno / Domain Privacy / Domain Name Privacy Inc.

Claim Number: FA2403002086391

 

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 Jan Everno / Domain Privacy / Domain Name Privacy Inc. ("Respondent"), Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <etradegulf.com> and <etrador.shop> ("Domain Names"), registered with SNAPNAMES 48, LLC and Dynadot 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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 1, 2024; Forum received payment on March 1, 2024.

 

On March 1 and March 4 2024, SNAPNAMES 48, LLC and Dynadot Inc confirmed by e-mail to Forum that the <etradegulf.com> and <etrador.shop> domain names are registered them and that Respondent is the current registrant of the names. Both of the Registrars have verified that Respondent is bound by their registration agreements 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 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@etradegulf.com and postmaster@etrador.shop. Also on March 8, 2024, 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 March 29, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." 

 

Complainant contends that the registrants for the Domain Names are related because the Domain Names both contain Complainant's E*TRADE mark (one with a misspelling) and then each of the Domain Names resolves to the same website (the "Respondent's Website").  This evidence, in the Panel's opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register similar domain names targeted at the same entity and point them to the same website.     

 

In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases.  Hereafter the single Respondent will be referred to as "Respondent" in this Decision.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, through its affiliates including E*Trade Financial Holdings, LLC and predecessors in title, has since 1992 operated a platform for the electronic trading of financial assets. Complainant has rights in the E*TRADE mark through Complainant's registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,985,826, registered July 9, 1996). Respondent's Domain Names are each confusingly similar to Complainant's mark. The <etradegulf.com> Domain Name incorporates the E*TRADE mark minus the asterisk and the generic term "gulf" and the generic top level domain ("gTLD") ".com". The <etrador.shop> Domain Name incorporates the E*TRADE mark minus the asterisk and the second "e" and the generic term "or" and the gTLD ".shop".

 

Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the E*TRADE mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use but instead passes off as Complainant and phishes for user information on the Respondent's Website.

 

Respondent registered and uses the Domain Names in bad faith. Respondent passes off as Complainant by reproducing Complainant's logo on its website, taking advantage of the goodwill associated with the well-known E*TRADE mark.  Respondent is conducting a phishing scheme and at the time of registration had actual knowledge of Complainant's rights in the E*TRADE mark. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the E*TRADE mark.  Each of the Domain Names is confusingly similar to Complainant's E*TRADE mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.

 

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

Complainant has rights in the E*TRADE mark based on registration with the USPTO (e.g. Reg. No. 1,985,826, registered July 9, 1996). Registration of a mark with the USPTO sufficiently confers a 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 Panel finds that each of the Domain Names is confusingly similar to the E*TRADE mark. Each of the Domain Names contains a minor misspelling of the E*TRADE mark removing the asterisk (an asterisk is not reproducible in a domain name) and in one case the second "e". Each of the Domain Names then add a generic term and a gTLD. The modification of the spelling of a mark and/or the addition of a generic term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where "[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term 'outlet' to Complainant's registered SKECHERS mark, and appends the '.com' top-level domain."); see also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) ("Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD '.com.'  This is insufficient to distinguish the disputed domain names from Complainant's trademark.")  The addition of a gTLD also fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

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

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the E*TRADE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Jan Everno / Domain Privacy / Domain Name Privacy Inc." as the registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

Each of the Domain Names is presently inactive but prior to the commencement of the proceeding resolved to the Respondent's Website that reproduced Complainant's E*TRADE mark and logo. It then offered a discount for signing up with the Complainant and invited visitors to provide the Respondent with their e-mail address.  Such conduct is best characterized as "phishing".  Respondent's use of the Domain Names to impersonate Complainant for the purpose of engaging in a phishing scheme to acquire personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).  See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant's to prompt users to enter their login information so that the respondent may gain access to that customer's cryptocurrency account); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018) ("Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii)."). 

 

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

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time it registered the Domain Names, May and December 2023 respectively, Respondent had actual knowledge of Complainant's E*TRADE mark. The Respondent used the Domain Names to pass itself off as Complainant for financial gain or to disrupt Complainant's business.  In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and used the Domain Names in bad faith as Respondent used the Domain Names to impersonate Complainant in furtherance of a phishing scheme.  Use of a disputed domain name to impersonate a complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii).  See Google Inc. v. Domain Admin / Whois Privacy Corp., FA 1622862 (Forum Aug. 10, 2015) (finding that the respondent's apparent use of the disputed domain name in furtherance of a 'phishing' scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).  Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds 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 <etradegulf.com> and <etrador.shop> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 31, 2024