Morgan Stanley Domestic Holdings, Inc. v. bao03
Claim Number: FA2307002052296
Complainant is Morgan Stanley Domestic Holdings, Inc. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is bao03 (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etradecryptocurrency.com>, <etrademaxbtc.com>, and <etradebit.com>, (‘the Domain Names’) registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on July 7, 2023; Forum received payment on July 7, 2023.
On July 9, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <etradecryptocurrency.com>, <etrademaxbtc.com>, and <etradebit.com> 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 July 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@etradecryptocurrency.com, postmaster@etrademaxbtc.com, postmaster@etradebit.com. Also on July 10, 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 August 2, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant and/or a member of its group is the owner of the trade mark ETRADE.COM registered, inter alia, in the USA for financial services with first use recorded as 1998.
The Domain Names registered in 2023 are confusingly similar to the Complainant’s mark adding only a generic word or abbreviation(s) and a gTLD which do not distinguish any of the Domain Names from the Complainant’s mark.
Respondent is not commonly known by the Domain Names and has no permission from the Complainant to use the Complainant’s mark. The Domain Names have been used for substantially the same sites bearing the Complainant’s mark in their mastheads purporting to offer competing services to those of the Complainant. This cannot be a bona fide offering of goods and services or a non commercial legitimate fair use. The Respondent has no rights or legitimate interests in the Domain Names.
The Respondent registered the Domain Names to direct them to sites which have used the Complainant’s mark incorporated in their mastheads to confuse Internet users into believing that the web sites and the Domain Names are associated with the Complainant. The Domain Names have been registered and used in bad faith to confuse Internet users and disrupt the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant and/or a member of its group is the owner of the trade mark ETRADE.COM registered, inter alia, in the USA for financial services with first use recorded as 1998.
The Domain Names registered in 2023 have been pointed to sites which have used the Complainant’s mark incorporated in its masthead to offer competing services and confuse Internet users into believing the web sites and the Domain Names are associated with the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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”).
The Domain Names consist of the Complainant’s ETRADE.COM mark (which is registered in USA for financial services with first use recorded as 1998), the generic words or abbreviations ‘cryptocurrency’, ‘bit’, ‘max’ and/or btc commonly used to mean bitcoin, and the gTLD .com.
The Panel agrees that the addition of generic term(s) or abbreviation(s) does not distinguish any of the Domain Names from the Complainant's trade mark pursuant to the Policy. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names 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 use of the Domain Names is commercial so cannot be legitimate non commercial fair use.
The web sites attached to the Domain Names purport to offer competing services to the Complainant using the Complainant’s mark in their mastheads. They do not make it clear that there is no connection with the Complainant. The Panel finds this use is confusing. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they have been using the Complainant’s mark in its masthead to offer competing services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web sites under Policy 4 (b)(iv) likely to disrupt the business of the Complainant under Policy 4 (b)(iii). See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etradecryptocurrency.com>, <etrademaxbtc.com>, and <etradebit.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 2, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page