E*Trade Financial Holdings, LLC v. John Hidle
Claim Number: FA2205001994630
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is John Hidle (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2022; the Forum received payment on May 2, 2022.
On May 2, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2022 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@etradere.com, postmaster@etraderes.biz, postmaster@etradere.biz, postmaster@etradere.click. Also on May 3, 2022, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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
Complainant contends as follows:
Complainant, E*Trade Financial Holdings, LLC, operates as a digital financial service provider.
Complainant has rights in the E*TRADE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Complainant’s use of their E*TRADE mark is extensive and has accrued goodwill and widespread recognition.
The <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> domain names are identical or confusingly similar to Complainant’s mark as each incorporates Complainant’s mark adding an “re” or an “res”, along with the addition of the “.com”, “.biz”, or “.click” generic top-level domain (“gTLD”). Respondent further omits the asterisk from Complainant’s E*TRADE mark..
Respondent lacks rights and legitimate interests in the at-issue domain names. Complainant has not authorized or licensed Respondent to use its E*TRADE mark, nor is Respondent commonly known by the disputed domain name. Respondent does not use the disputed domain names for any bona fide offering of goods services nor any legitimate noncommercial or fair use. Rather, Respondent uses the similarity of the at-issue domain names to impersonate Complainant and take advantage of the goodwill associated with Complainant’s famous mark to perpetuate a phishing scheme and offer competing services.
Respondent registered and uses the at-issue domain names in bad faith. Respondent registered the domain names with actual and constructive knowledge of Complainant’s mark. Respondent uses the domain names to take advantage of the goodwill and brand recognition associated with Complainant’s mark. Respondent uses the confusingly similar nature of the at-issue domain names to disrupt Complainant’s business. Respondent uses the at-issue domain names to impersonate or create a false association with Complainant in connection with fraud and phishing.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the E*TRADE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the E*TRADE trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and to purport to offer competing services in furtherance of a phishing scheme.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it owns a USPTO registration for its E*TRADE mark. Such registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).”).
Respondent’s <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> domain names all contain Complainant’s E*TRADE trademark less its impermissible asterisk, followed by either “re” or “res,” with all followed by “.com,” “.biz,” or “.click” as its the top-level domain name The differences between each at-issue domain names and Complainant’s E*TRADE trademark are insufficient to distinguish any of the at-issue domain names from E*TRADE for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> domain names are each confusingly similar to Complainant’s E*TRADE trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also 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, Academy, Ltd., d/b/a Academy Sports & Outdoors v. Transure Enterprise Ltd c/o Host Master, FA 1309191 (Forum Mar. 9, 2010) (holding that “the deletion of the “+” symbol creates a confusing similarity” between respondent’s <academysports.com> and complainant’s ACADEMY SPORTS + OUTDOORS).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name.
The WHOIS information for the at-issue domain names ultimately identifies the domain name’s registrant as “John Hidle” and record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s at-issue domain names address fake E*TRADE branded websites dressed to appear as if sponsored by Complainant while purporting to offer services that compete with services offered by Complainant under its E*TRADE mark. Respondent’s use of the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Respondent’s at-issue domain names are also used to phish for private information by capitalizing internet users’ mistaken belief that they are dealing with Complainant and then tricking such users into divulging personal private information to Respondent. Using the domain names to phish for private data is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent disrupts Complainant’s business and exploits the confusing similarity it created between its at-issue domain names and Complainant’s trademark by using the confusingly similar domain names to pass off and purport to compete with Complainant. Under Policy ¶¶ 4(b)(iii) and (iv), using the at-issue domain names to host competing products or services shows bad faith registration and use. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Additionally, Respondent uses the domain names to phish for personal data. The confusingly similar <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> domain names are used to trick their website visitors into submitting personal data to Respondent thereby further showing Respondent’s bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the E*TRADE mark at the time it registered <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> as domain names. Respondent’s actual knowledge is evident from the notoriety of the E*TRADE trademark and from Respondent’s use of the domain names to impersonate Complainant and trade off Complainant’s E*TRADE trademark to phish for private information as discussed elsewhere herein. Respondent’s registration and use of <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> with knowledge of Complainant’s rights in such domain names further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etradere.com>, <etraderes.biz>, <etradere.biz>, and <etradere.click> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 31, 2022
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