E*Trade Financial Holdings, LLC v. Smit Sanghvi
Claim Number: FA2207002003493
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Smit Sanghvi (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <binaryoptionsetrade.info>, which is registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2022; the Forum received payment on July 8, 2022.
On July 14, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <binaryoptionsetrade.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@binaryoptionsetrade.info. Also on July 15, 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 August 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides a variety of online financial services for investors, traders, financial advisors, stock plan participants and stock plan administrators.
Complainant holds a registration for the E*TRADE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,985,826, registered July 9, 1996, and renewed most recently as of September 3, 2016.
Complainant does business from a website resolving from its primary domain name, <www.us.etrade.com>.
Respondent registered the domain name <binaryoptionsetrade.info> on April 14, 2018.
The domain name is confusingly similar to Complainant’s E*TRADE mark.
Respondent has no relationship whatsoever with Complainant.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s E*TRADE mark.
Respondent does not provide a bona fide offering of goods or services by means of the domain name, nor does Respondent make a legitimate noncommercial or fair use of it.
Respondent’s use of the domain name falsely suggests that Respondent is somehow endorsed by or affiliated with Complainant, which causes confusion among Internet users interested in doing business with Complainant and disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the E*TRADE mark when Respondent registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the E*TRADE service mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <binaryoptionsetrade.info> domain name is confusingly similar to Complainant’s E*TRADE mark. The domain name incorporates the mark in its entirety, save only for deletion of the imbedded asterisk, and the addition of the generic terms “binary” and “options,” which together relate to an aspect of Complainant’s participation in the trading of financial instruments, and, at the same time, demonstrate Respondent’s intention to employ the domain name in a commercial undertaking, plus the affixed generic Top Level Domain (“gTLD”) “.info.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, 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 [Policy ¶ 4(a)(i)].
See also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum November 18, 2005) (finding that a respondent’s addition of both the term “advisors” and the gTLD “.com” to the mark of another in creating a domain name did not prevent a finding of confusing similarity under Policy ¶ 4(a)(i)).
And, as to Respondent’s deletion of the asterisk in Complainant’s mark in forming the domain name, that revision of the mark is of no consequence to our analysis because asterisks are not permitted in domain names. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
Punctuation … [is] … not significant in determining the similarity of a domain name and a mark because punctuation … [is] … not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <binaryoptionsetrade.info> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <binaryoptionsetrade.info>, that Respondent has no relationship whatsoever with Complainant and that Complainant has not licensed or otherwise authorized Respondent to use the E*TRADE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “SMIT SANGHVI,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <binaryoptionsetrade.info> domain name to pass itself off as Complainant online while purporting to offer investment and securities trading services in competition with the business of Complainant via third-party trading platforms. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Amer. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a UDRP complainant online, in a blatant unauthorized use of that complainant’s mark, was evidence that that respondent had no rights to or legitimate interests in a disputed domain name within the compass of either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)). See also Alcon, Inc. v. ARanked, FA 1306493 (Forum March 18, 2010):
The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <binaryoptionsetrade.info> domain name, as detailed in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, block.one v. Negalize Interactive Things, FA 1798280 (Forum August 21, 2018):
Offering links to [websites offering] competing products or services can demonstrate bad faith [registration and use] under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the E*TRADE mark when Respondent registered the challenged <binaryoptionsetrade.info> domain name. This further shows Respondent’s bad faith in registering it. See, for example, Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum April 10, 2006) (finding that, where the circumstances indicate that a respondent knew of a UDRP complainant's mark when it registered a confusingly similar domain name, administrative panels can find bad faith in the registration of the domain name). See also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration of a disputed domain name where a respondent was "well-aware of the complainant's … mark at the time of [domain name] registration").
We thus find that Complainant has amply met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <binaryoptionsetrade.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 12, 2022
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