E*Trade Financial Holdings, LLC v. mohammad shihab
Claim Number: FA2206002002571
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is mohammad shihab (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etrader.net>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2022; the Forum received payment on June 29, 2022.
On June 30, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <etrader.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 June 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@etrader.net. Also on June 30, 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 July 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it operates in the financial services industry. Complainant originated as a platform that allowed retail investors to trade stocks online. Today, Complainant provides a suite of digital financial services for investors, traders, financial advisors, stock plan participants, and stock plan administrators. Complainant employs more than 4,100 individuals and has 30 retail branches across the United States. In October 2020, Morgan Stanley announced that it had completed its acquisition of Complainant. With the acquisition, Morgan Stanley’s Wealth Management division oversees approximately $3.3 trillion in assets. Complainant has rights in the E*TRADE mark through its registration of the mark in the United States in 1996.
Complainant alleges that the disputed domain name is identical or confusingly similar to its E*TRADE mark as it incorporates the mark in its entirety while misspelling the mark by adding the letter “r”, eliminating the asterisk, and adding the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its E*TRADE mark in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, or a legitimate non commercial or fair use, but instead uses it to impersonate Complainant and cause consumer confusion with fake investments. The financial services offered via Respondent’s website are fake. Specifically, the resolving website contains several photos ostensibly purporting to be images and names of Respondent’s customers. For example, a photo on the resolving website claims to be a photo of “Layla”, with text reading “Layla +3.7%+£56.21 TSLA”, which appears to suggest that Respondent has a customer “Layla” who made a return of 3.7% on her investments. However, an online images search indicates that the photo of “Layla” is actually a modified version of a stock image photo available for purchase on a third-party stock photo website. Similarly, an online images search indicates that a photo of the purported customer “Zara” on the resolving website is actually a modified version of a stock photo available for purchase on a third-party stock photo website. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The resolving website offers fake services. Respondent capitalizes on confusing similarity for commercial gain. Respondent passes off as Complainant while engaging in opportunistic bad faith. Respondent disrupts Complainant’s business by causing initial interest confusion. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the E*TRADE mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark E*TRADE and uses it to provide financial services.
Complainant’s rights in its mark date back to 1996.
The disputed domain name was registered in 2001.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website offers fake financial services.
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 disputed domain name incorporates Complainant’s E*TRADE mark in its entirety while misspelling the mark by adding the letter “r”, eliminating the asterisk, and adding the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the mark it incorporates where it adds a letter and the “.com” gTLD. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Additionally, omitting a punctuation mark is insufficient in differentiating the domain name from the mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS record identifies the registrant as “mohammad shihab”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The resolving website offers fake services. Specifically, Complainant provides evidence showing that the resolving website contains several photos ostensibly purporting to be images and names of Respondent’s customers. For example, a photo on the resolving website claims to be a photo of “Layla”, with text reading “Layla +3.7%+£56.21 TSLA”, which appears to suggest that Respondent has a customer “Layla” who made a return of 3.7% on her investments. However, an online images search indicates that the photo of “Layla” is actually a modified version of a stock image photo available for purchase on a third-party stock photo website. Similarly, an online images search indicates that a photo of the purported customer “Zara” on the resolving website is actually a modified version of a stock photo available for purchase on a third-party stock photo website. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Acton Educational Services, Inc. d/b/a West Coast University v. Adam Smith, FA0812001238865 (Forum Jan. 26, 2009) (no rights or legitimate interests when Respondent was not offering real educational services); see also Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA 1191541 (Forum July 2, 2008) (website offering fake educational services was not a legitimate use of domain name). Thus the Panel finds that Respondent fails to use the disputed domain name to make 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). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
According to 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.
Since the disputed domain name was registered in 2001, the Panel must address the question of whether that initial registration of the disputed domain name was made in relation to Complainant’s mark, and whether the registration has merely been renewed by the same registrant ever since.
Complainant does not provide evidence that addresses this question.
As noted above, 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”).
However, according to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
A search in the Internet Archive indicates that the resolving websites varied dramatically over the years since the disputed domain name was first registered in 2001: the resolving websites promoted very different businesses, some of which appear to have been legitimate and were not related to Complainant or its business; the disputed domain name was inactive for several years. The current version of the resolving website appears to date to the end of 2021, after Morgan Stanley announced that it had completed its acquisition of Complainant.
The Panel infers that Respondent’s registration is a new registration for the purposes of the instant proceedings. Consequently the Panel need not consider whether the initial registration may have been made in good faith in the sense of the Policy.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website offers fake services. This can be evidence of bad faith registration and use under the Policy. See Bridgewater Associates, LP v. Mike Manning, FA2112001976062 (Forum Jan. 4, 2022) (finding bad faith registration and use where the resolving website was offering fake financial services). Thus the Panel finds bad faith registration and use in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etrader.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 26, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page