E*Trade Financial Holdings, LLC v. Aleksandr Novikov
Claim Number: FA2205001995869
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Aleksandr Novikov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etradngs.biz>, <etradgs.click>, <etradgs.biz>, and <etradngs.click>, (‘the Domain Names’) registered with NameCheap, Inc.
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 the Forum electronically on May 11, 2022; the Forum received payment on May 11, 2022.
On May 11, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <etradngs.biz>, <etradgs.click>, <etradgs.biz>, and <etradngs.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 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@etradngs.biz, postmaster@etradgs.click, postmaster@etradgs.biz, postmaster@etradngs.click. Also on May 12, 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 June 7, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant and/or members of its group are the owner of trademarks containing E TRADE including E*TRADE and ETRADE.COM registered, inter alia, in the USA with first use recorded as 1992 and 1998 respectively.
The Domain Names registered in 2022 are confusingly similar to the Complainant’s marks, incorporating their E TRADE element without its second letter e’ and/or the asterisk and adding the letter(s) ‘n’, ‘g’ and/or ‘s’ and the gTLDs “.biz” or “.click” which does not distinguish 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 or its logo. The Domain Names have been used for sites featuring a log in screen using the Complainant’s E*TRADE mark in exact logo form with identical colours as a masthead for obvious phishing purposes. This cannot be a bona fide offering of goods and services or a noncommercial 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 use the Complainant’s E*TRADE mark and logo to confuse Internet users into believing the web sites and Domain Names are associated with the Complainant. The mimicking of and reference to the Complainant shows the Respondent is aware of the Complainant and its business. 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 or members of its group is the owner of trademarks containing E TRADE including E*TRADE and ETRADE.COM registered, inter alia, in the USA with first use recorded as 1992 and 1998 respectively.
The Domain Names registered in 2022 have been used for sites with a log in screen featuring the Complainant’s E*TRADE mark and logo as a masthead for phishing purposes.
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 a misspelling of the E*TRADE/ETRADE element of the Complainant’s marks (which are registered in USA for financial services with first use of E*TRADE recorded as 1992 and first use of ETRADE.COM recorded as 1998) and the gTLDs “.biz” or “.click”.
The Panel agrees that such misspellings, removal of one letter and adding up to three others and/or removal of an asterisk do not distinguish the Domain Names from the Complainant's trademarks pursuant to the Policy. See Twitch Interactive Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (where an additional ‘c’ was added) See E*Trade Financial Holdings, LLC v. 房云玺, FA2108001960331 (Forum Sept. 20, 2021) (holding that removing an asterisk and adding a generic term to a mark does not differentiate a domain name from a mark under Policy ¶ 4(a)(i).).
Additionally, misspelling a mark and adding a gTLD such as “.biz” and “.click” generally do not distinguish a domain name from a mark under Policy 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”)
Accordingly, the Panel holds that the Domain Names are each confusingly similar to the Complainant’s registered marks.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. 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, FA1408001574905 (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 web sites attached to the Domain Names feature a log in page with the Complainant’s E*TRADE mark and logo as a masthead so that the Respondent’s sites appeared to be official sites of the Complainant. They did not make it clear that there is no connection with the Complainant. The Panel finds this use is deceptive and passing off. As such it cannot amount to the bona fide offering of goods and services. See iFinex Inc. v. Yuri Heifetz/Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant in order to cause existing or potential customers of the complainant to believe they are dealing with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Further phishing itself cannot be a bona fide offering of goods and services or a legitimate noncommercial fair use. See iFinex Inc. v. Elba Perez / GDI Interest, FA1803001779837 (Forum May 8, 2018) (transferring the <bitfinex.cash> domain name where “Respondent attempts to pass itself off as Complainant to phish for [login] information and fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).”).
The Respondent has not answered this Complaint or provided any explanation.
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 panelist 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 use the Complainant’s E*TRADE mark and logo as a masthead for a log in screen. Use of the Complainant’s logo shows that the Respondent is aware of the Complainant and its rights, business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant's trademarks 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).
Further phishing is evidence of bad faith registration and use within the Policy 4 (a)(iii) See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
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 paras 4(b)(iv) and 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etradngs.biz>, <etradgs.click>, <etradgs.biz>, and <etradngs.click> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 8, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page