DECISION
Morgan Stanley Domestic Holdings, LLC v. Maurizio Turella
Claim Number: FA2402002086203
PARTIES
Complainant is Morgan Stanley Domestic Holdings, LLC ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Maurizio Turella ("Respondent"), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-tradeweb.com>, registered with Register SpA.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 29, 2024. Forum received payment on February 29, 2024.
On March 1, 2024, Register SpA confirmed by e-mail to Forum that the <e-tradeweb.com> domain name is registered with Register SpA and that Respondent is the current registrant of the name. Register SpA has verified that Respondent is bound by the Register SpA registration agreement, which is in Italian, 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 March 1, 2024, Forum served the Complaint and all Annexes, including an Italian and English Written Notice of the Complaint, setting a deadline of March 21, 2024 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@e-tradeweb.com. Also on March 1, 2024, the Italian and English 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, Forum transmitted to the parties a Notification of Respondent Default in Italian and English.
On March 22, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
As noted, the Register SpA registration agreement is in Italian. Pursuant to Rule 11(a), the language of the proceeding in relation to the <e-tradeweb.com> domain name shall be Italian unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The Panel notes that the <e-tradeweb.com> domain name is in English and resolves to a website in two versions – one in English and the other in Italian. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Italian and English language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Morgan Stanley Domestic Holdings, LLC, with its affiliates and predecessors-in-interest, provides a suite of digital financial services for investors, traders, financial advisors, stock plan participants, and stock plan administrators under several trademarks which are well-known in the financial and investment services industries, including E*TRADE.
Complainant has rights in the E*TRADE mark through numerous registrations, including with the United States Patent and Trademark Office ("USPTO"). Respondent's <e-tradeweb.com> domain name is confusingly similar to Complainant's E*TRADE mark.
Respondent lacks rights or legitimate interests in the <e-tradeweb.com> domain name since Respondent is not licensed or authorized to use Complainant's E*TRADE mark and there is no evidence to suggest that Respondent is commonly known by that name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a website offering services closely related to those offered by Complainant in order to take advantage of and intentionally trade on the goodwill associated with Complainant's marks.
As to bad faith, there can be no doubt that Respondent was aware of Complainant's E*TRADE mark when registering the <e-tradeweb.com> domain name and did so because it was confusingly similar to Complainant's well-known mark and Respondent intended to capitalize on that confusion. Respondent uses the domain name in bad faith to take advantage of the goodwill and brand recognition associated with Complainant and its mark by purporting to offer financial services similar to those offered by Complainant. By causing initial interest confusion, Respondent's use and registration of the <e-tradeweb.com> domain name disrupts the business of Complainant. This is additional evidence of bad faith use and registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(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 or legitimate interests in respect of the domain name; and
(iii) 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 as 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').
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the E*TRADE mark through numerous registrations, including with the USPTO (e.g., Reg. No. 1,985,826, registered on July 9, 1996). The Panel finds Respondent's <e-tradeweb.com> domain name to be confusingly similar to Complainant's mark, only differing by the replacement of the asterisk with a hyphen and the addition of the word "web", which does nothing to distinguish the domain name from the mark. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <e-tradeweb.com> domain name was registered on June 15, 2023, many years after Complainant has shown that its E*TRADE mark had become well-known in the financial and investment services industries. It resolves to a website with pages in Italian and duplicate pages in English. The website prominently displays the term FINTECH (a common abbreviation for financial technology) at the top of the home page, indicating that the site offers financial services of the kind provided by Complainant, and prominently displays the mark "eTradeWeb," which is confusingly similar to Complainant's E*TRADE mark.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <e-tradeweb.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's well-known E*TRADE mark when Respondent registered the <e-tradeweb.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's website and of the goods or services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-tradeweb.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 28, 2024
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