Morgan Stanley v. David Thompson
Claim Number: FA1412001596100
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is David Thompson (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <us-morganstanley.com> ("the Domain Name"), registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2014; the National Arbitration Forum received payment on December 19, 2014.
On December 22, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <us-morganstanley.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 December 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2015 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@us-morganstanley.com. Also on December 22, 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 January 14, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne 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
Complainant's submissions can be summarised as follows:
The Complainant offers a full range of financial services in dozens of countries, including the United States.
Complainant owns registrations of the mark MORGAN STANLEY in countries all over the world including the United States. This mark has been used by the Complainant and its predecessors in interest in relation to financial services since at least 1935 and the marks remain in use worldwide, including in the United States. It is well known.
Complainant also owns morganstanley.com and morganstanley.net.
The Domain Name features the Complainant's mark in its entirety and merely adds the term US which is an acronym for the United States, a place where the Complainant does significant business. The addition of a descriptive geographic location to the Domain Name, especially a location where the Complainant does business does nothing to distinguish the Domain Name from the Complainant's mark.
The addition of the gTLD .com, elimination of space and addition of a hyphen are irrelevant in distinguishing the Domain Name from the Complainant's mark.
Morgan Stanley is not part of the Respondent's name. Respondent does not appear to trade under the name Morgan Stanley or US-Morgan Stanley. Respondent has never been authorised by the Complainant to use the Morgan Stanley name or the Domain Name. The Respondent has no relationship whatsoever with the Complainant.
Respondent is not using the Domain Name in relation to any bona fide offering of goods or services or for any legitimate or fair use.
Complainant's mark is so well known that the Respondent has constructive notice and the only plausible inference is that the Respondent registered the Domain Name to take advantage of and intentionally trade on the goodwill associated with the marks in an effort to attract internet users to its website which constitutes bad faith. Respondent's failure to make use of the Domain Name is further evidence of bad faith use and registration. Respondent's use of a privacy service and failure to respond to a letter before action also supports an inference of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant offers a full range of financial services in dozens of countries, including the United States.
Complainant owns registrations of the mark MORGAN STANLEY in countries all over the world including the United States. This mark has been used by the Complainant and its predecessors in interest in relation to financial services since at least 1935 and the marks remain in use worldwide, including in the United States. It is well known.
The Domain Name has not been used.
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.”).
The Disputed Domain Name contains MORGAN STANLEY, the Complainant's registered mark. The Panel finds that the generic prefix "US" and the use of a hyphen and the gTLD.com is not sufficient to prevent the Domain Name being confusingly similar to the Complainant's registered trade mark under the Policy. See Dollar Fin Grp Inc. v Jewald & Assocs Ltd FA 96676 (Nat Arb. Forum Apr 6, 2001) (The addition of US or USA does not alter the underlying mark held by the complainant); see also Health Devices Corp v Aspen STC FA 158254 (Nat. Arb. Forum July 1 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a) (i); see also Bank of Am. Corp. v McCall FA 1350129nat Arb Forum Dec 31 2002) (holding that attaching a gTLD is 'unable to create a distinction capable of overcoming a finding of confusing similarity’)
As such the Panel finds that the Domain Name registered by the Respondent is confusingly similar to a trademark or service mark in which Complainant has rights and the first limb of the Policy is satisfied.
The Defendant has failed to respond and has failed to give any reason why it should hold a domain name consisting of the Complainant's famous mark plus a geographical designation indicating the United States, a place where the Complainant does business. As such the panel finds that the Respondent lacks rights and legitimate interests in the Domain Name. See Pharmacia & Upjohn AB v Romero d2000-1273 (WIPO Nov 13 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and made no use of the domain name in question)
Respondent has failed to make active use of the Domain Name. In previous decisions panels have found that holding an infringing domain name without active use could constitute use in bad faith In Clerical Medical Inv Group Ltd v clericalmedical.com D2000-1228 ( WIPO Nov 28 2000) the Panel found that merely holding an infringing domain name without an active use could constitute bad faith. In light of the Respondent's failure to respond and the famous nature of the Complainant's mark, the Panel finds that the Domain Name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <us-morganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 20, 2015
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