Morgan Stanley v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1903001834199
Complainant is Morgan Stanley ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Super Privacy Service LTD c/o Dynadot ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wearemorganstanley.com>, registered with Dynadot, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2019; the Forum received payment on March 14, 2019.
On March 17, 2019, Dynadot, LLC confirmed by email to the Forum that the <wearemorganstanley.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@wearemorganstanley.com. Also on March 19, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant
is a global financial, investment, and wealth management services company.
Complainant has more than 1,000 offices in over 40 countries, including the
United States. Complainant has used MORGAN STANLEY and related marks in
connection with this business since at least as early as 1935. Complainant's
MORGAN STANLEY mark is registered in countries around the world, including the
United States. Complainant asserts that its mark is famous and has become well
known to consumers globally as a result of its extensive use and promotion.
Respondent registered the disputed domain name <wearemorganstanley.com> in February 2019. The domain name redirects Internet users to a page on Undeveloped.com, a third-party marketplace site, offering it for sale for $990. Complainant states that Respondent has no relationship with Complainant, as a licensee or otherwise; is not authorized to use Complainant's mark; and is not commonly known by the mark or the disputed domain name. Complainant asserts that its mark is so well-known that the only plausible inference that can be drawn from Respondent's registration of the disputed domain name is that Respondent's intent was to trade on the goodwill associated with Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <wearemorganstanley.com> is confusingly similar to its MORGAN STANLEY mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. Webnet-Marketing, Inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
The disputed domain name <wearemorganstanley.com> incorporates Complainant's registered MORGAN STANLEY trademark, prefixed by the generic phrase "we are," omitting the spaces between words, and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Morgan Stanley v. Brian Jaccoma, FA 1805650 (Forum Oct. 9, 2018) (finding <herwayatmorganstanley.com> and <herwaymorganstanley.com> confusingly similar to MORGAN STANLEY); Morgan Stanley v. Harish Sreenivasa Shetty, FA 1727690 (Forum May 3, 2017) (finding <morganstanleypay.com> confusingly similar to MORGAN STANLEY); Bugatti International S.A. v. Devonrick Jefferson, FA 1531136 (Forum Jan. 2, 2014) (finding <wearebugatti.com> confusingly similar to BUGATTI); VML London Ltd. v. Andrew Levicki, D2010-0910 (WIPO July 20, 2010) (finding <wearegoodtechnology.com> confusingly similar to GOOD TECHNOLOGY). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
The disputed domain name incorporates Complainant's famous mark without authorization and in a manner likely to mislead Internet users about its affiliation with Complainant. Its sole apparent use has been to redirect Internet users to a web page at which the domain name is offered for sale for $990, a price that the Panel infers is based largely upon the incorporation of Complainant's famous mark in the domain name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name."
Respondent registered a domain name incorporating Complainant's famous mark without authorization and in a manner likely to mislead Internet users about its affiliation with Complainant, and is offering it for sale at a price that the Panel presumes to be excess of Respondent's out-of-pocket costs. The Panel concludes that the domain name was registered and is being used in bad faith based upon paragraph 4(b)(i) of the Policy.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wearemorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 15, 2019
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