DECISION

 

Morgan Stanley Domestic Holdings, LLC v. wefwe

Claim Number: FA2404002091494

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 wefwe ("Respondent"), Albania.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <etrade-bt.com>, <e-trade-bt.com> and <etrade-bt.top>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 3, 2024; Forum received payment on April 3, 2024.

 

On April 7, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <etrade-bt.com>, <e-trade-bt.com> and <etrade-bt.top> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 April 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@etrade-bt.com, postmaster@e-trade-bt.com, postmaster@etrade-bt.top. Also on April 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 April 30, 2024, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, Morgan Stanley Domestic Holdings, LLC, 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 names are confusingly similar to Complainant's mark as they incorporate the E*TRADE mark in its entirety, merely adding the generic and/or descriptive term "bt" (an abbreviation for "bitcoin") and the ".com" or ".top" gTLD and eliminating the asterisk from Complainant's E*TRADE mark.

 

ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant's E*TRADE mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name <etrade-bt.top> does not resolve to an active website. The disputed domain names <etrade-bt.com> and <e-trade-bt.com> resolved to sites, which purported to offer financial trading services by way of passing off Respondent as Complainant.

 

iii) Respondent registered and uses the disputed domain names in bad faith. Respondent registered and uses the disputed domain names <etrade-bt.com> and <e-trade-bt.com> to offer financial trading services, including cryptocurrency investment services by way of passing itself off as Complainant. Respondent's failure to currently make active use of the disputed domain name <etrade-bt.top> is also evidence of bad faith use and registration. Respondent is presumed to have had constructive knowledge of Complainant's marks at the time he or she registered the disputed domain names.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain names <etrade-bt.com> and <etrade-bt.top> were registered on October 11, 2023; the disputed domain name <e-trade-bt.com> was registered on October 12, 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 <etrade-bt.top> currently remains inactive.

4. The disputed domain names <etrade-bt.com> and <e-trade-bt.com> resolved to sites that prominently displayed the name and marks E*TRADE-BT and included a logo in which the term "E*TRADE" appears with an asterisk in between the E and T – just like in Complainant's E*TRADE marks.

5. The resolving site for <e-trade-bt.com> features a bi-directional arrow logo that is identical or nearly identical to the distinctive bi-directional arrow logo contained within Complainant's E*TRADE mark.

6. The resolving sites of the disputed domain names <etrade-bt.com> and <e-trade-bt.com> purported to offer financial trading services, including cryptocurrency investment services.

 

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 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 names <etrade-bt.com>, <e-trade-bt.com> and <etrade-bt.top> are confusingly similar to Complainant's mark because the addition of the generic or descriptive term "bt" (an abbreviation for "bitcoin") and the ".com" or ".top" gTLD, and the elimination of the asterisk from Complainant's E*TRADE mark fail to obviate the confusing similarity. The Panel agrees and finds that 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."). 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 names are confusingly similar to Complainant's E*TRADE mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 names as Respondent is not licensed or authorized to use Complainant's E*TRADE mark and is not commonly known by the disputed domain names. 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 WHOIS information for the disputed domain names lists the registrant as "wefwe." There is nothing in the records to suggest that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

 

Complainant also argues Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name <etrade-bt.top> does not resolve to an active website. Failure to make active use of a disputed domain name indicates a respondent does not use the domain for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)."). Complainant provides a screenshot showing the disputed domain name <etrade-bt.top> resolves to an error message. Therefore, the Panel finds that Respondent is not using the domain name <etrade-bt.top> for 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).

 

Next, Complainant contends that the disputed domain names <etrade-bt.com> and <e-trade-bt.com> resolved to sites that prominently displayed the name and marks E*TRADE-BT —which are confusingly similar to Complainant's ETRADE marks—and included a logo in which the term "E*TRADE" appears with an asterisk in between the E and T – just like in Complainant's E*TRADE marks; the resolving site for <e-trade-bt.com> also features a bi-directional arrow logo that is identical or nearly identical to the distinctive bi-directional arrow logo contained within Complainant's E*TRADE mark. In addition, the sites purported to offer financial trading services, including cryptocurrency investment 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 somehow affiliated with Complainant. The Panel finds that the use of a disputed domain name to offer goods and/or services that compete with a complainant's business by way of impersonating 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 <etrade-bt.com> and <e-trade-bt.com> domain names' resolving websites which purport to offer financial services, that are closely related to the services offered by Complainant. Therefore, the Panel finds Respondent does not use the disputed domain names 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 names.

 

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the disputed domain names in bad faith. Complainant specifically points out that Respondent's passive holding of the disputed domain name <etrade-bt.top> that is confusingly similar to Complainant's mark constitutes use in bad faith. Complainant provides a screenshot showing the disputed domain name resolves to a webpage with an error message. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy.  See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith).

 

The particular circumstances of this case that the Panel has considered are:

 

i) Complainant's ETrade business employs thousands of individuals and provides financial services to millions of consumers. A Google search for webpages that contain both the terms "E*Trade" and "finance" yielded over 494 million results. Complainant and its services under the ETRADE marks have received numerous awards, such as "Best for Mobile Trading" in Barron's Annual Online Broker Survey, February 2021 and "Best Brokerage for Beginners" in Benzinga's 2020 Global Fintech Awards. News about Complainant and its services under the ETRADE marks is routinely covered in major news outlets, such as Newsday, the Los Angeles Times, SNL Financial Services Daily, and the Chicago Tribune. As a result of Complainant's extensive use and promotion of its ETRADE marks, the ETRADE marks enjoy considerable goodwill, widespread recognition, and secondary meaning, such that the ETRADE marks have become associated with Complainant and the services it provides; and

 

ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name <etrade-bt.top>.

 

Taking into account all of the above, the Panel concludes that Respondent's passive holding of the disputed domain name <etrade-bt.top> constitutes bad faith use and registration under Policy, paragraph 4(a)(iii) and that Respondent registered and uses the disputed domain name in bad faith.

 

Next, Complainant contends that Respondent registered and uses the disputed domain names <etrade-bt.com> and <e-trade-bt.com> to offer purported financial services that compete with Complainant by way of passing itself off as Complainant. The Panel finds that such false association and passing off constitute bad faith use and registration. See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) ("Respondent's use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)"). The Panel recalls that the disputed domain names <etrade-bt.com> and <e-trade-bt.com> resolved to sites that prominently displayed the name and marks E*TRADE-BT —which are confusingly similar to Complainant's ETRADE marks—and included a logo in which the term "E*TRADE" appears with an asterisk in between the E and T – just like in Complainant's E*TRADE marks; and the resolving site for <e-trade-bt.com> also features a bi-directional arrow logo that is identical or nearly identical to the distinctive bi-directional arrow logo contained within Complainant's E*TRADE mark. In addition, the sites purported to offer financial trading services, including cryptocurrency investment services, that are identical or closely related to the services offered by Complainant.

 

The Panel finds that Respondent disrupts Complainant's business by redirecting Internet users to webpages that mimic Complainant's website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain names <etrade-bt.com> and <e-trade-bt.com> in bad faith per Policy ¶ 4(b)(iv).

 

Complainant further contends that Respondent registered and uses the disputed domain names with constructive or actual knowledge of Complainant's rights in the E*TRADE mark. Complainant points to the fame and consumer recognition of Complainant's E*TRADE mark around the world prior to Respondent's registration of the disputed domain names and the displaying of Complainant's marks on the disputed domain name's resolving websites. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant's rights in the E*TRADE mark at the time of registering the disputed domain names, and finds that Respondent registered the disputed domains in bad faith under 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-bt.com>, <e-trade-bt.com> and <etrade-bt.top> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: May 3, 2024