Morgan Stanley v. Morgan Stanley IT Tech c/o Andries deHaan
Claim Number: FA1212001476237
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Morgan Stanley IT Tech c/o Andries deHaan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyclentservices.com>, registered with Enom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2012; the National Arbitration Forum received payment on December 17, 2012.
On December 20, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <morganstanleyclentservices.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 2013 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@morganstanleyclentservices.com. Also on December 26, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
a. The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (UDRP Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i)).
i. Complainant Morgan Stanley offers a full range of financial and investment and wealth management services to a full range of clients through a unique combination of institutional and retail capabilities. Through this unique combination of institutional and retail capabilities, Complainant is able to offer a full range of financial and investment services to a full range of clients. With hundreds of offices in dozens of countries, including in the United States, Complainant offers truly global access to financial markets and advice.
ii. Complainant is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world. Complainant and its predecessors-in-interest have used the MORGAN STANLEY family of marks in connection with financial services since at least as early as 1935, and the marks remain in use worldwide. As a result of extensive use, promotion and advertisement, the MORGAN STANLEY family of marks are well-known to consumers. In fact, a number of panels of the National Arbitration Forum have recognized that MORGAN STANLEY is a well-known mark. See, e.g., Morgan Stanley v. jorge Stephan, FA 1219168 (Nat. Arb. Forum Sept. 12, 2008); Morgan Stanley v. Meow, FA 671304 (Nat. Arb. Forum May 22, 2006); Morgan Stanley v. Albert Jackson, FA 244092 (Nat. Arb. Forum Apr. 19, 2004). The MORGAN STANLEY mark is an extremely important asset with enormous good will that inures to the benefit of Complainant.
iii. Complainant also is the owner of the CLIENTSERV mark. Complainant and its predecessors-in-interest have used the CLIENTSERV mark in connection with online financial management services since at least as early as 1999, and the mark remains in use worldwide. As a result of extensive use, promotion and advertisement, the CLIENTSERV mark is well-known to consumers. The CLIENTSERV mark is an extremely important asset with enormous good will that inures to the benefit of Complainant.
iv. Complainant also is the owner of the top level domain names MORGANSTANLEY.COM, MORGANSTANLEY.NET and MORGANSTANLEYCLIENTSERV.COM, as well as numerous variations thereof in the .com, .net and other gTLDs and numerous similar country code domain name registrations. Complainant registered the MORGANSTANLEY.COM domain name in 1996 and the MORGANSTANLEYCLIENTSERV.COM domain in 2000.
v. Complainant owns registrations for the MORGAN STANLEY marks in countries all over the world, including the United States. Morgan Stanley’s U.S. registrations include Registration Nos. 1,707,196, 2,968,441, 3,096,321, 2,852,094, 2,872,848, 2,919,873 and 2,759,476.
vi. Complainant also owns U.S. Registration No. 2,322,252 for the mark CLIENTSERV.
vii. These trademark registrations “conclusively prove[] Complainant’s rights in the MORGAN STANLEY [and CLIENTSERV marks] for the purposes of Policy ¶4(a)(i).” Morgan Stanley v. Denve Dallas, FA 1342149 (Nat. Arb. Forum Oct. 5, 2010). See also Morgan Stanley v. Whois Privacy Service, FA 1419600 (Nat. Arb. Forum Jan. 20, 2012) (“Complainant has presented evidence to show that it owns the MORGAN STANLEY (e.g., Reg. No. 1,707,196 registered August 11, 1992) and CLIENTSERV marks (Reg. No. 2,322,252 registered February 2, 2000) with the USPTO. The Panel finds this evidence to be sufficient for Complainant to establish rights in those marks under Policy ¶4(a)(i)”).
viii. Respondent is the owner of the disputed domain name MORGANSTANLEYCLENTSERVICES.COM. The disputed domain name, which incorporates Complainant’s MORGAN STANLEY mark in whole and a misspelling of Complainant’s registered CLIENTSERV mark must be deemed virtually identical or confusingly similar to Complainant’s registered MORGAN STANLEY and CLIENTSERV marks. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full); Thomson Canada Ltd., Thomson Finance S.A. and Reuters Ltd. v. Ian Alter, FA 124307 (Nat. Arb. Forum Feb. 22, 2008) (domain name THOMSONREUTERS.NET held confusingly similar to complainant’s marks THOMSON and REUTERS).
ix. The fact that the domain name uses a misspelling of Complainant’s CLIENTSERV mark does not obviate confusion. See Am. Girl, LLC v. BWI Domain Manager, FA 104431 (Nat. Arb. Forum Dec. 14, 2007) (AMERICANGIR.COM found confusingly similar to AMERICAN GIRL mark because omission of letter “L” held insufficient to distinguish disputed domain name from mark). It is well-settled that a domain name that is a common mistyping or misspelling of a mark is confusingly similar to that mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding BELKEN.COM domain name confusingly similar to complainant’s BELKIN mark because name merely replaced letter “I” in complainant’s mark with letter “E”); Bergdorf Goodman, Inc. & NM Nevada Trust v. Edwyn Huang, FA 1286505 (Nat. Arb. Forum Nov. 4, 2009) (panel held that disputed domain name BERGDORFHOODMAN.COM was confusingly similar to complainant’s mark BERGDORF GOODMAN); Morgan Stanley v. Purple Bucquet / Purple, FA 1336613 (Nat. Arb. Forum Sept. 6, 2010) (domain name MARGANSTANLEY.COM confusingly similar to complainant’s MORGAN STANLEY trademarks).
x. Indeed, a number of prior panels of the National Arbitration Forum have found disputed domain names that contained misspellings of the combination of Complainant’s MORGAN STANLEY and CLIENTSERV marks were confusingly similar to Complainant’s marks. See, e.g., Morgan Stanley v. Whois Privacy Service, FA 1419600 (Nat. Arb. Forum Jan. 20, 2012) (MORGANSTANLEYCLIENTSEV.COM); Morgan Stanley v. Above.com Domain Privacy, FA 1380941 (Nat. Arb. Forum May 3, 2011) (MORGNSTANLEYCLIENTSERV.COM); Morgan Stanley v. Above.com Domain Privacy, FA 1366174 (Nat. Arb. Forum Feb. 14, 2011) (ORGANSTANLEYCLIENTSERV.COM); Morgan Stanley v. Comdot Internet Services Private Limited, FA 1178866 (Nat. Arb. Forum June 9, 2008) (MORGANSTANLEYCLIENTSER.COM).
xi. The addition of the gTLD “.com” and elimination of spaces also are irrelevant in distinguishing the disputed domain name from Complainant’s mark. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Nat. Arb. Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (elimination of spaces between terms do not establish distinctiveness from complainant’s mark).
b. Why Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. (UDRP Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii)).
i. Upon information and belief, neither MORGAN STANLEY nor MORGANSTANLEYCLENTSERVICES.COM are part of Respondent’s name. Additionally, upon information and belief, Respondent does not actually engage in any business or commerce under the name MORGAN STANLEY or MORGANSTANLEYCLENTSERVICES.COM, and Respondent is not commonly known by either of those names. See SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Nat. Arb. Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY’S name); Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Nat. Arb. Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name).
ii. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY marks or domain name MORGANSTANLEYCLENTSERVICES.COM. Indeed, Respondent has no relationship whatsoever to Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
iii. Although the WhoIs database indicates that Respondent is called Morgan Stanley IT Tech c/o Andries deHaan, upon information and belief, Respondent has falsely indicated itself as, or associated with, Morgan Stanley. Complainant has not authorized Respondent’s use of the name Morgan Stanley IT Tech and Complainant is unaware of any person named Andries deHaan associated with Complainant. See Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA 1191541 (Nat. Arb. Forum, July 2, 2008) (respondent was not commonly known by WESTCOASTUNIVERSITY.US domain name pursuant to Policy ¶4(c)(iii) even though WHOIS information identified respondent as “West Coast University International Inc.” because there was no affirmative evidence in the record proving respondent’s identity); Morgan Stanley v. Morgan Stanley, FA 1169733 (Nat. Arb. Forum, May 3, 2008) (although WHOIS information identified respondent as “Morgan Stanley,” Panel concluded that respondent lacked rights and legitimate interest in disputed domain name MORGANSTANLEYUNIVERSITY.COM domain name as respondent had provided no other information suggesting that it might be commonly known by disputed domain name); Morgan Stanley v. Morgan Stanley, FA 1245123 (Nat. Arb. Forum Mar. 10, 2009) (“Despite Respondent’s listing in the WHOIS information as ‘Morgan Stanley,’ there is no corroborating evidence that would demonstrate that Respondent is indeed commonly known by the disputed domain name. More significantly, Complainant argues that Respondent lacks any license or permission to use Complainant’s mark”).
iv. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services.
v. When first registered, Respondent’s domain name resolved to a webpage that clearly sought to “impersonate” Complainant and mislead consumers into mistakenly believing that Respondent’s website and purported services were somehow affiliated with or sponsored by Complainant, when they were not. The website utilized without authorization Complainant’s MORGAN STANLEY marks numerous times and plagiarized graphics and text from Complainant’s legitimate websites. Such fraudulent use of a domain name to impersonate and create a false connection with Complainant is not a bona fide use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”); Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent’s attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant . . . is evidence that Respondent lacks rights or legitimate interests in the disputed domain name”).
vi. Respondent’s original website also invited unsuspecting consumers to disclose personal and confidential information, such as usernames and passwords for consumers’ legitimate Morgan Stanley accounts, under the guise that Respondent’s website was somehow associated or affiliated with Complainant, when it was actually not. Indeed, Respondent, or someone acting on Respondent’s behalf, sent emails to Morgan Stanley consumers, instructing those consumers to log into their Morgan Stanley accounts via the fraudulent webpage and change and/or verify their passwords. The use of a confusingly similar domain name that links to a website used to “phish” for Internet users’ personal information is not a legitimate purpose or bona fide offering of goods or services. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (respondent’s use of ALLIANZCORP.BIZ domain name to fraudulently acquire personal information of Internet users was not bona fide offering of goods or services or legitimate noncommercial or fair use of disputed domain name pursuant to Policy); Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (using a domain name in fraudulent scheme to deceive Internet users into providing personal information is not bona fide offering of goods or services or legitimate noncommercial or fair use).
vii. Complainant’s counsel wrote to both the Registrar of the disputed domain name and the ISP that hosted the infringing and phishing website, and was successful in having the link to the original content disabled shortly after it was first posted. While the disputed domain name remained inactive for a few weeks, it currently resolves to a parking website, which contains links to third-party businesses offering financial services that compete with Complainant’s services. The parking of a domain name that resolves is a site with hyperlinks to third parties, especially those that compete with Complainant, is not a legitimate or bona fide use of a domain name. See San Francisco Baseball Associates L.P. v. Chad Lincoln, FA 1220185 (Nat. Arb. Forum Sept. 29, 2008) (use of parked pages and displayed links not bona fide offering of goods and services); Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Lu Lan, FA 1297147 (Nat. Arb. Forum Jan. 15, 2010) (no legitimate interest where “Respondent’s <lexixnexus.com> and <nexisuk.com> domain names resolve to parked websites containing hyperlinks and advertisements resolving to third-parties unrelated to Complainant”).
viii. Moreover, Respondent is most likely receiving click-through fees by using the disputed domain name in this manner, which also is not a bona fide offering of goods and services under Paragraph ¶4(c)(i) of the Policy. See Russell Frey, d/b/a edHelper v. Glenn Scott, FA 1291225 (Nat. Arb. Forum Dec. 17, 2009) (panel held that respondent was likely profiting through receipt of click-through fees by use of disputed domain name EHELPER.COM to resolve to website containing links to third-party sites in competition with complainant and respondent’s use was neither bona fide offering of goods and services under Policy ¶4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
ix. Lastly, Respondent does not have any legitimate rights in the disputed domain name given the prior use and registration of Complainant’s MORGAN STANLEY marks by Complainant and its affiliates and predecessors-in-interest. Complainant’s prior use and registration of such marks give Respondent actual, or at a minimum constructive, knowledge of such use and registration. See Morgan Stanley v. Chan, FA 244123 (Nat. Arb. Forum Apr. 23, 2004) (respondents likely had knowledge of complainant’s MORGAN STANLEY marks prior to registration of domain name due to complainant’s “long-standing use and fame” of marks, and fact that marks were registered with USPTO provided constructive notice to respondent of complainant’s rights in MORGAN STANLEY marks).
c. Why the domain name should be considered as having been registered and used in bad faith. (UDRP Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
i. It is clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks. Complainant has a long and well established reputation in these marks through its exclusive use thereof in the financial and investment services industries throughout the world. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY and CLIENTSERV marks when it chose and registered the disputed domain name, and in fact chose the disputed domain name because it was confusingly similar to Complainant’s well-known marks and intended to capitalize on that confusion to attract Internet users to its webpage. This alone constitutes evidence of bad faith of an registration of a domain. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Nat. Arb. Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM); Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”).
ii. Indeed, as discussed above, Respondent’s website sought to impersonate Complainant and falsely suggest that the website was maintained by, sponsored by or affiliated with Complainant. Such false association and passing off in violation of Complainant’s intellectual property rights is further evidence of bad faith use and registration of the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that disputed domain name was registered and used in bad faith where respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using complainant’s famous marks and likeness); DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (bad faith shown by Respondent’s use of title “Dodgeviper.com Official Home Page,” which gave consumers impression that Complainant endorsed and sponsored Respondent’s website); Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Nat. Arb. Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)”).
iii. Respondent’s use of a confusingly similar domain name to engage in “phishing” by encouraging Internet users to disclose personal information to the Respondent under false pretenses is further evidence of bad faith use and registration of the disputed domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because respondent used domain name to redirect Internet users to website that imitated the complainant’s website and to fraudulently acquire personal information from Internet users); HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (same).
iv. The disputed domain name currently resolves to a website that provides links to commercial websites that offer services that compete with Complainant and its services. This is additional evidence of bad faith use and registration of the disputed domain name. See Morgan Stanley v. Ke Zhao, FA 1317816 (Nat. Arb. Forum May 17, 2010) (“The Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶4(b)(iii) because Respondent’s disputed domain name diverts Internet users seeking Complainant’s services to the services of Complainant’s competitors thereby creating a disruption to Complainant’s business”); Morgan Stanley v. Domain Park Ltd., FA 1045852 (Nat. Arb. Forum Sept. 10, 2007) (finding domains were registered and used in bad faith where they resolved to parked web pages that contain links to third-party sites, some of which offered services that competed with Complainant’s services).
v. Presumably, Respondent receives a financial benefit in the form of click- through fees from these competitors of Complainant, a further indication of bad faith. See Enterprise Rent-A-Car Company v. Whois Service c/o Belize Domain WHOIS Service, FA 992206 (Nat. Arb. Forum June 29, 2007) (receipt of click- through fees is evidence of bad faith); Morgan Stanley v. Ke Zhao, FA 1317816 (Nat. Arb. Forum May 17, 2010) (“In this case the Panel presumes that Respondent is collecting click-through fees and is attempting to profit by creating a likelihood of confusion between the Complainant’s MORGAN STANLEY mark and the confusingly similar disputed domain name”).
vi. Nonetheless, even if Respondent does not receive click-through fees and it was the Registrar, and not the Respondent, who, pursuant to the “parking” agreement between the Respondent and Registrar, generated the links to third party competitors of Complainant, Respondent still acted in bad faith because it allowed “the disputed domain name to be used to attract, for commercial gain, Internet users who may be confused as to Complainant[s’] affiliation with those sites.” Discovery Communications, LLC v. Tripp Wood, FA 1299987 (Nat. Arb. Forum Feb. 19, 2010) (“a respondent engages in bad faith registration and use when the respondent has authorized the use of the parking service and thus condoned its use of the disputed domain name”); see also St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used”); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will”).
vii. Respondent’s use of a false identity to impersonate Complainant in the WhoIs database is further evidence of bad faith use and registration of the disputed domain name. See Enterprise Holdings, Inc. v. Enterptise Online Services, Ltd, FA 1444232 (Nat. Arb. Forum June 14, 2012) (“Furthermore, Complainant claims Respondent registered the domain name under a fictitious name. This means Respondent provided false WHOIS information. That alone is sufficient grounds to find bad faith registration and use of the domain name”); Choice Hotels International, Inc. v. windermere, FA 1364454 (Nat. Arb. Forum Feb. 28, 2011) (“Use of false contact information constitutes further evidence of bad faith”).
viii. Finally, because Complainant’s marks are well known and registered in many countries throughout the world, including the United States, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time it registered the confusingly similar domain name. This knowledge indicates Respondent’s bad faith use and registration of the disputed domain name. See Carnival Plc v Belize Domain WHOIS Service Lt, FA 997973 (Nat. Arb. Forum July 17, 2007) (constructive knowledge of mark due to federal registration is evidence of bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”).
Complainant provides evidence of its trademark registration with the United States Patent & Trademark Office (“USPTO”) for its MORGAN STANLEY mark (Reg. No. 1,707,196 registered Aug. 11, 1992). Complainant also provides evidence of its trademark registration with the USPTO for its CLIENTSERV mark (Reg. No. 2,322,252 registered Feb. 22, 2000). Previous panels have found a registration for a given mark with a trademark authority is sufficient evidence of rights in the mark under Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Based on Complainant’s registrations, the Panel finds Complainant has satisfactorily proven its rights in the MORGAN STANLEY and CLIENTSERV marks pursuant to Policy ¶4(a)(i).
Complainant argues Respondent’s <morganstanleyclentservices.com> disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks. The <morganstanleyclentservices.com> domain name uses a misspelled version of Complainant’s CLIENTSERV mark. Respondent deletes the letter “i” and adds the letters “ices” to Complainant’s CLIENTSERV mark. Complainant points out previous panels have found domain names consisting of misspelled or combined versions of Complainant’s MORGAN STANLEY and CLIENTSERV marks are confusingly similar to Complainant’s marks. This Panel agrees. Complainant claims the addition of the “gTLD” “.com” and the removal of the space between the terms of the MORGAN STANLEY mark do not distinguish a disputed domain name from a registered mark. Every domain name requires a TLD (either a gTLD or a ccTLD) as part of its syntax. The UDRP would be eviscerated if the TLD was allowed to differentiate a disputed domain name from a mark because almost no marks contain a TLD. Previous panels have found such minor variances are not sufficient to differentiate a disputed domain name from a complainant’s registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding that the <glencoemcgrawhill.com> domain name is confusingly similar to the complainant’s GLENCOE and MCGRAW-HILL marks under Policy ¶4(a)(i); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). This Panel finds the <morganstanleyclentservices.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <morganstanleyclentservices.com> domain name because Respondent is not commonly known by the disputed domain name. Respondent is not involved with business dealings under the MORGAN STANLEY or <morganstanleyclentservices.com> names and is not commonly known by either of them. Complainant has not licensed or authorized Respondent to register or use its MORGAN STANLEY mark. The WHOIS information for Respondent’s <morganstanleyclentservices.com> domain name lists “Morgan Stanley IT Tech Andries de Haan” as the registrant. No such person is associated with Complainant. The WHOIS information falsely suggests Respondent is associated with Complainant, which obviously furthers Respondent’s phishing. It is clear to this Panel Respondent was never commonly known by the disputed domain name prior to the domain name’s registration. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶4(c)(ii).”). The Panel finds Respondent is not commonly known by the <morganstanleyclentservices.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other information in the record.
Complainant claims Respondent has no rights or legitimate interests in the <morganstanleyclentservices.com> domain name because Respondent is not using the <morganstanleyclentservices.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims Respondent previously used the resolving website to impersonate Complainant and mislead consumers into mistakenly believing Respondent’s website and purported services were somehow affiliated with Complainant. Impersonating a Complainant cannot constitute a bona fide offering of goods or services. Respondent’s resolving website featured the unauthorized use of Complainant’s MORGAN STANLEY mark, plagiarized graphics and text from Complainant’s legitimate website. Respondent’s website featured “Morgan Stanley” as the top heading of the page, as well as a prompt to, “Log In To Your Account.” Respondent copied and impersonated the appearance of Complainant’s online presence to pass itself off as Complainant. Respondent’s original website prompted consumers to disclose personal and confidential information for real accounts associated with Complainant’s business (commonly called “phishing”). Respondent sent an email to Complainant’s customers instructing them to log into their accounts through Respondent’s fraudulent webpage and change/verify their passwords. A respondent’s attempts to pass itself off as a complainant is evidence a respondent lacks rights and legitimate interests in a disputed domain name. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”) Previous panels have found phishing for personal information is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of a disputed domain name. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. 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)). This seems self-evident. Respondent’s use of the disputed domain name to pass itself off as Complainant and perpetuate a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii).
Respondent’s website presently resolves to a parked page containing links to third party businesses offering financial services and competing with Complainant. Some of the links include, “Schwab Advisor Services,” “Risk Management,” “Hedge Funds Recruiting,” “Alternative Investment Markets,” “Investment Banking Firms,” “Citibank Careers,” “Wealth Management Conference” “JP Morgan Foundation” and “Global Commodities Trading.” Complainant claims (and this Panel finds, in the absence of evidence to the contrary) Respondent is receiving pay-per-click fees through the links featured on the web page. Providing competing hyperlinks to generate pay-per-click fees is not normally a bona fide offering of goods or services or a legitimate noncommercial or fair use of someone else’s marks. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent has no rights or legitimate interests in the <morganstanleyclentservices.com> domain name because it is not making a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims the <morganstanleyclentservices.com> domain name currently diverts internet users seeking Complainant’s services to a website displaying links to competitors of Complainant, disrupting Complainant’s business. Using a disputed domain name to resolve to a website to divert Internet users to a complainant’s competitors constitutes bad faith under Policy ¶4(b)(iii). Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”) Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent’s current resolving website is used to attract, for commercial gain, Internet users who may be confused about Complainant’s affiliation with the site. Complainant claims Respondent receives a financial benefit from the pay-per-click fees associated with the links to Complainant’s competitors. Respondent’s resolving website includes links such as, “JP Morgan Foundation,” “Citibank Careers,” and “Investment Banking Firms.” Previous panels have found using a disputed domain name in this manner constitutes bad faith use and registration pursuant to Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). This Panel concurs and finds Respondent registered and is using the <morganstanleyclentservices.com> domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent’s previous use of the <morganstanleyclentservices.com> domain name to resolve to a website attempting to pass itself off as Complainant demonstrates bad faith registration and use because it confuses consumers as to Respondent’s affiliation with Complainant’s business. Respondent used the confusingly similar <morganstanleyclentservices.com> domain name and website to operate a phishing scheme by attempting to collect personal account information from Complainant’s consumers. It is clearly bad faith when a respondent attempts to acquire personal and financial information through a confusingly similar domain name and by attempting to pass itself off as Complainant. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). Respondent’s efforts to pass itself off as Complainant and operate a phishing scheme is evidence of bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent must have had constructive and/or actual notice of Complainant's rights in the MORGAN STANLEY and CLIENTSERV mark prior to registration of the domain name because of Complainant's widespread use of the mark in many countries throughout the world, including the United States, and its trademark registrations with the USPTO. While constructive notice is generally not regarded as sufficient to support a finding of bad faith, the Panel finds Respondent had actual notice of Complainant's mark based upon Respondent’s copying of Complainant’s logo, phishing and providing false contact information to impersonate Complainant. Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <morganstanleyclentservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, February 7, 2013
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