Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. LINO FLORES HIDALGO
Claim Number: FA1404001556389
Complainant is Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is LINO FLORES HIDALGO (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-mssb.com>, registered with GODADDY.COM, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2014; the National Arbitration Forum received payment on April 28, 2014.
On April 30, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <morganstanley-mssb.com> 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 May 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2014 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@morganstanley-mssb.com. Also on May 1, 2014, 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 May 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent consents to the transfer of the <morganstanley-mssb.com> domain name. However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12(b), the Panel will issue a decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions
a) Complainant offers a full range of financial, investment and wealth management services to a broad spectrum of clients. Complainant is a wholly owned subsidiary of Morgan Stanley.
b) Complainant has rights in both the MORGAN STANLEY and MSSB marks, used in connection with wealth management. Complainant owns registrations for the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992) and owns a registration for the MSSB mark with the USPTO (Reg. No. 3,975,158 registered June 7, 2011).
c) Respondent’s <morganstanley-mssb.com> is confusingly similar to Complainant’s MORGAN STANLEY and MSSB marks. The disputed domain name incorporates both of Complainant’s marks in their entirety while adding a hyphen in between the marks and the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <morganstanley-mssb.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MORGAN STANLEY mark or MSSB mark in any way.
b. The <morganstanley-mssb.com> domain name does not resolve to an active website, and thus does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use.
e) Respondent registered and is using the <morganstanley-mssb.com> domain name in bad faith.
a. Respondent has failed to make an active use of the disputed domain name, which is evidence by the inactive resolving website.
b. Respondent had knowledge of Complainant’s MORGAN STANLEY and MSSB marks prior to registering the <morganstanley-mssb.com> domain name because Complainant has a long and well established reputation in connection with these marks and the marks have been registered in countries throughout the world.
Respondent’s Contentions
Respondent failed to submit a valid Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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 contends it has rights in both the MORGAN STANLEY and MSSB marks, used in connection with wealth management. Complainant states it owns registrations for the MORGAN STANLEY mark with the USPTO (e.g., Reg. No. 1,707,196 registered August 11, 1992) and owns a registration for the MSSB mark with the USPTO (Reg. No. 3,975,158 registered June 7, 2011). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation to satisfy the requirements of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the MORGAN STANLEY and MSSB marks within the meaning of Policy ¶ 4(a)(i) because Complainant holds registrations for each mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <morganstanley-mssb.com> is confusingly similar to Complainant’s MORGAN STANLEY and MSSB marks. Complainant observes that the disputed domain name incorporates both of Complainant’s marks in their entirety while adding a hyphen between the marks and the gTLD “.com.” The Panel finds that combining two of a complainant’s marks in a single domain name does not negate a finding of confusingly similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). The Panel finds that the addition of a hyphen and a gTLD, as well as the elimination of the space between MORGAN and STANLEY, does not sufficiently distinguish a disputed domain name from a trademark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); 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)). Therefore, the Panel finds that Respondent’s <morganstanley-mssb.com> is confusingly similar to Complainant’s MORGAN STANLEY and MSSB marks pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 contends that Respondent does not have any rights or legitimate interests in the <morganstanley-mssb.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MORGAN STANLEY mark or MSSB mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “LINO FLORES HIDALGO” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and all the evidence in the record in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the MORGAN STANLEY or MSSB mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <morganstanley-mssb.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the <morganstanley-mssb.com> domain name does not resolve to an active website, and thus does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. The Panel notes that Complainant has not attached a screen shot of the inactive website. Previous panels have refused to find that inactive use confers rights or legitimate interests in the domain name at issue. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <morganstanley-mssb.com> domain name resolves to an inactive website.
Complainant has proven this element.
Although Complainant’s contentions fall outside Policy ¶ 4(b), the Panel may still find bad faith under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Those illustrations are not meant to be an exhaustive list. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant contends that Respondent registered and is using the <morganstanley-mssb.com> domain name in bad faith. Complainant claims Respondent had knowledge of Complainant’s MORGAN STANLEY and MSSB marks prior to registering the disputed domain name because Complainant has a long and well established reputation in connection with these marks and the marks have been registered in countries throughout the world. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. 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). However, the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name and finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); 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”).
Complainant alleges that Respondent has failed to make an active use of the <morganstanley-mssb.com> domain name. Previous panels have found that a failure to make an active use of a confusingly similar domain name constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent’s failure to make an active use of the <morganstanley-mssb.com> domain name demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii).
Complainant has proven this element.
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 <morganstanley-mssb.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 2, 2014
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