When you pick a domain containing a well-known mark, you’ll face the consequences, sooner or later.
In the case of Etrades.com the domain was auctioned off on NameJet in early 2018, following a quick hold by New Ventures Services, the domain repository arm of Network Solutions.
That auction closed at $5,099 dollars. Source: NameBio.
Fast-forward four years with E*Trade Financial Holdings LLC, operators of the popular stock-trading platform Etrade filing a UDRP with the Forum (NAF.)
As expected, the sole panelist questioned the Respondent’s motives to acquire the domain:
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing a sign confusingly similar to the Complainant’s marks which have a reputation for stockbroking services. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Final decision: Transfer Etrades.com to the Complainant.
E*Trade Financial Holdings, LLC v. Daniel Jones
Claim Number: FA2203001987827
PARTIES
Complainant is E*Trade Financial Holdings, LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Daniel Jones (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , (‘the Domain Name’) registered with GoDaddy.com, LLC.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on March 11, 2022; the Forum received payment on March 11, 2022.
On March 11, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the 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 March 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@etrades.com. Also on March 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 April 8, 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.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant’s arguments can be summarized as follows:
The Complainant is the owner of the trade mark ETRADE.COM registered, inter alia, in the USA for stockbroking services with first use recorded as 1998 and it is the url of its official web site. It also owns E*TRADE for the same services also in the USA and used since 1992.
The Domain Name registered in 2018 is confusingly similar to the Complainant’s marks merely adding the letter ‘s’ and in the case of E*TRADE removing the asterisk and adding the gTLD “.com”.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant. Typosquatting is also an indication of lack of rights or legitimate interests in a Domain Name.
The Domain Name has been pointed to pay per click links which compete with the Complainant. This is not a bona fide offering of goods or services or a legitimate non commercial or fair use.
The Domain Name has been registered and used in bad faith as Respondent intentionally attracts Internet users to his web site bearing competing pay per click links for commercial gain by creating a likelihood of confusion with the Complainant’s marks, thereby disrupting the Complainant’s business. Typosquatting is bad faith per se.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The Complainant is the owner of the trademarks E*TRADE and ETRADE.COM registered, inter alia, in the USA for stockbroking services with first use recorded as 1992 and 1998 respectively.
The Domain Name registered in 2018 has been used for competing pay per click links.
DISCUSSION
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”).
Identical and/or Confusingly Similar
The Domain Name is confusingly similar to the Complainant’s ETRADE.COM mark (registered in the USA for stockbroking services with first use recorded as 1998) merely adding a letter ‘s’, and the Complainant’s E*TRADE mark (registered in the USA for stockbroking services with first use recorded as 1992) merely removing the asterisk and adding the letter ‘s’ and the gTLD “.com”.
Removal of punctuation does not prevent confusing similarity between a complainant’s mark and a domain name under the Policy. 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). Accordingly, removal of the asterisk does not prevent the Domain Name being confusingly similar to the Complainant’s E*TRADE mark.
The Panel agrees that misspellings such as adding a letter do not distinguish a domain name from a complainant’s trade mark pursuant to the Policy. LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s is confusingly similar to complainant’s ARCHER HOTEL mark.”). Adding a letter ‘s’ does not prevent confusing similarity between each of the Complainant’s marks and the Domain Name.
The gTLD .com does not serve to distinguish a domain name from a Complainant’s mark under the Policy. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the TLD was insufficient to differentiate the disputed domain name from the mark). As such the addition of the gTLD “.com” does not prevent the Domain Name from being confusingly similar to the Complainant’s E*TRADE mark.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with both the E*TRADE and ETRADE.COM marks in which the Complainant has rights.
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 mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. 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).
Use for pay per click links that compete with a complainant is not a bona fide offering of good or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Differing from the Complainant’s ETRADE.com url and mark by only one letter the Domain Name appears to be a typosquatting registration. Typosquatting can provide additional evidence that a respondent has no rights or legitimate interests in a disputed domain name. See Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”).
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing a sign confusingly similar to the Complainant’s marks which have a reputation for stockbroking services.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int’l Ltd. v. Domain Admin ****** It’s all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
Use for competing pay per click links also indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the domain name pursuant to Policy 4(b)(iii)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy 4(b)(iv)). See also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (where the Panel inferred Respondent’s actual knowledge based on Respondent’s use of the domain name to promote links related to the same field as where Complainant’s mark is used.).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(iii) and (iv).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 11, 2022
