Morgan Stanley Domestic Holdings LLC filed a UDRP against the domain Etradia.com, arguing that it’s confusingly similar to its well-known ETRADE trademark, replacing the “e” with “ia” and omitting the asterisk, which failed to distinguish it sufficiently from the original mark.
The sole panelist found that Complainant held clear rights to the ETRADE mark, registered since 1996, and that the Respondent’s use of the domain to compete with the Complainant’s financial services confirmed its bad faith intentions.
The Respondent failed to submit a response, leaving the Complainant’s allegations uncontested. The panelist determined that the Respondent lacked legitimate rights to the domain; furthermore, the domain’s registration was deemed an intentional act to capitalize on the Complainant’s reputation.
Final decision: Grant the transfer of the domain Etradia.com to Morgan Stanley Domestic Holdings LLC, concluding that all three elements of the UDRP were met.
Copyright © 2025 DomainGang.com · All Rights Reserved.Morgan Stanley Domestic Holdings, LLC v. WYLES ANTHONY
Claim Number: FA2411002127092
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 WYLES ANTHONY (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is etradia.com, registered with Global Domain Group LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 27, 2024; Forum received payment on November 27, 2024.
On November 27, 2024, Global Domain Group LLC confirmed by e-mail to Forum that the etradia.com domain name is registered with Global Domain Group LLC and that Respondent is the current registrant of the name. Global Domain Group LLC has verified that Respondent is bound by the Global Domain Group 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 December 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@etradia.com. Also on December 2, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s etradia.com domain name is confusingly similar to Complainant’s E*TRADE mark.
2. Respondent does not have any rights or legitimate interests in the etradia.com domain name.
3. Respondent registered and uses the etradia.com domain name in bad faith.
B. Respondent does not contest this Complaint.
FINDINGS
Complainant operates in the financial services industry and holds a registration for the E*TRADE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,985,826, registered July 9, 1996.)
Respondent registered the etradia.com domain name on August 30, 2024, and uses it to compete with Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 Panel finds that Complainant has rights in the E*TRADE mark through its registration with the USPTO. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO).
Respondent’s etradia.com domain name uses Complainant’s E*TRADE mark without the asterisk, and replaces the “e” with “ia”, and adds the gTLD “.com”. Under Policy ¶ 4(a)(i), adding a generic letter or term to a disputed domain name is insufficient to distinguish a disputed domain name from the mark it incorporates. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”) see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”). Therefore, the Panel finds that Respondent’s etradia.com domain name is confusingly similar to Complainant’s E*TRADE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.”).
Complainant contends that Respondent has no rights or legitimate interests in the etradia.com domain name, as Respondent is not known by the domain name and Complainant has not given Respondent permission to use the ETRADE mark. The WHOIS identifies “WYLES ANTHONY” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant argues that Respondent fails to use the etradia.com domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses it to compete with Complainant. Using a disputed domain name to compete with a complainant is not 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). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the website resolving from the disputed domain name showing that Respondent uses it to offer competing financial services. The Panel finds that neither use is a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent registered and uses the etradia.com domain name in bad faith to compete with Complainant. The Panel agrees and finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the lbittrex.com domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant also claims that Respondent had knowledge of Complainant’s rights in the ETRADE mark when it registered the disputed domain name, based on the fame of the ETRADE mark. The Panel agrees, noting that Respondent uses the disputed domain name to directly compete with Complainant, and finds further bad faith under Policy ¶ 4(a)(iii). See HDR Global Trading v. Garreth Griggs, FA 189660 (Forum April 28, 2020) (“Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when it registered the xbitmex.com mark as a domain name. Respondent’s actual knowledge is evident from Respondent’s use of the domain name to directly compete with Complainant as discussed above. Registering and using a confusingly similar domain name to directly compete with knowledge of Complainant’s rights in such domain name in itself shows bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 etradia.com domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 27, 2024
This UDRP is very educating in its decision. Most domain investors would agree.