E*Trade Financial Holdings, LLC v. Oleksiy Donta / Alex Henry
Claim Number: FA2205001998477
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Oleksiy Donta / Alex Henry (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etradeg.com>, <etradene.click>, <etradenes.biz>, <etradene.biz>, <etradenm.click>, <etradenm.biz>, <etradenm.me>, <etradegs.click>, <etradeg.biz>, <etradeg.click>, and <etradeg.me>, 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 May 31, 2022; the Forum received payment on May 31, 2022.
On May 31, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <etradeg.com>, <etradene.click>, <etradenes.biz>, <etradene.biz>, <etradenm.click>, <etradenm.biz>, <etradenm.me>, <etradegs.click>, <etradeg.biz>, <etradeg.click>, and <etradeg.me> 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 June 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@etradeg.com, postmaster@etradene.click, postmaster@etradenes.biz, postmaster@etradene.biz, postmaster@etradenm.click, postmaster@etradenm.biz, postmaster@etradenm.me, postmaster@etradegs.click, postmaster@etradeg.biz, postmaster@etradeg.click, postmaster@etradeg.me. Also on June 2, 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 3, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant alleges that all of the domain names were registered on the same day. This is not correct. The <etradene.click>, <etradenes.biz>, and <etradene.biz> domain names were registered on May 24, 2022 and the <etradeg.com>, <etradenm.click>, <etradenm.biz>, <etradenm.me>, <etradegs.click>, <etradeg.biz>, <etradeg.click>, and <etradeg.me> domain names were registered on May 25, 2022. The names were registered by two different registrants, who gave the same street (but not number) as their address.
Complainant alleges that all of the domain names have been used for identical or nearly identical sites that impersonate Complainant and its marks. This too is not correct. While all of the domain names do indeed resolve to websites that display Complainant’s marks and impersonate Complainant in furtherance of a phishing scheme, there are two quite different layouts. That is, the domain names <etradene.click>, <etradenes.biz>, <etradene.biz>, <etradeg.com>, <etradenm.click> resolve to a website that is quite different from the website to which resolve the domain names <etradeg.biz>, <etradeg.click>, <etradeg.me>, <etradegs.click>, <etradenm.biz>, <etradenm.me>. Each block of domain names was registered by one of two registrants, who gave the same street (but not number) as their address.
Some of the domain names registered on May 25, 2022 by one registrant resolve to the same website as the domain names registered on May 24, 2022 by the other registrant, and all of the domain names resolve to websites that display Complainant’s logo and mark and impersonate Complainant in furtherance of a phishing scheme. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all of the contested domain names, and the two registrants are collectively referred to as “Respondent”.
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 names are virtually identical and confusingly similar to its E*TRADE mark because they incorporate the E*TRADE mark in its entirety (minus the asterisk) and merely add various letters to create slight misspellings, as well either a generic top-level domain (“gTLD”) or a country code top-level domain (“ccTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized nor licensed to Respondent any rights in the E*TRADE mark. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to websites that display Complainant’s mark and logo and refer to Complainant’s services in furtherance of a phishing scheme. The disputed domains also create initial interest confusion.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain name in order to pass itself off as Complainant and divert customers for commercial gain through a phishing scheme. The disputed domain names create initial interest confusion. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in its E*TRADE mark.
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 names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names all resolve to websites which display Complainant’s mark and logo 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”).
Each of the disputed domain name incorporates Complainant’s E*TRADE mark in its entirety (minus the asterisk) and merely adds various letters to create slight misspellings, as well either a generic top-level domain (“gTLD”) or a country code top-level domain (“ccTLD”). The omission of a special character, the addition of extraneous letters, and the addition of a gTLD or ccTLD fail sufficiently to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Lonza Ltd. v. Isabel Rodriguez Negron, FA2007001904285 (Forum Aug. 11, 2020) (finding the domain name <ilonza.com> confusingly similar to Complainant’s LONZA mark); see also Brooks Sports, Inc. v. chen jiajin, FA 101001930406 (Forum Mar. 30, 2021) (finding that “adding random letters and a gTLD…fails to sufficiently distinguish a disputed domain name); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ 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 also 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.”); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per 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 names: under Policy ¶ 4(c)(ii) WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. 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). Here, the WHOIS information of record lists the registrant as either “Oleksiy Donta” or “Alex Henry” for each of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names within the meaning of Policy ¶ 4(c)(ii).
Respondent purports to be Complainant through its use of fraudulent websites bearing Complainant’s mark and logo and reference to its services in furtherance of a phishing scheme. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business ); see also Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
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 names.
Indeed, as already noted, Respondent uses the disputed domain names to pass off as Complainant in furtherance of a phishing scheme. This can be evidence of 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).”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Thus the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the resolving websites display Complainant’s mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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 name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(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 <etradeg.com>, <etradene.click>, <etradenes.biz>, <etradene.biz>, <etradenm.click>, <etradenm.biz>, <etradenm.me>, <etradegs.click>, <etradeg.biz>, <etradeg.click>, and <etradeg.me> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 5, 2022
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