Morgan Stanley v. Alpine Capital Mortgage / Greg Hogan
Claim Number: FA1601001655777
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Alpine Capital Mortgage / Greg Hogan (“Respondent”), Idaho, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.pro>, registered with Name.com, Inc.
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.
Antonina Pakhaerenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2016; the Forum received payment on January 8, 2016.
On January 11, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <morganstanley.pro> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 January 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2016 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.pro. Also on January 11, 2016, 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.
A timely Response was received and determined to be complete on January 28, 2016.
An Additional Submission was received from Complainant on January 29, 2016.
On February 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its MORGAN STANLEY mark in connection with its offerings of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. With over 1,000 offices in over 40 countries, including in the US, Complainant offers global access to financial markets and advice. Complainant also provides mortgage services.
Complainant is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world. Complainant owns registrations for its MORGAN STANLEY marks for financial services and related goods and services in countries all over the world, including U.S. Registration Nos. 1,707,196; 2,759,476; 4,470,389; 3,873,602; 4,559,009; 4,421,020; 4,006,543 and 1,703,693.
Complainant established its rights in the MORGAN STANLEY mark decades before Respondent registered the disputed domain name.
The <morganstanley.pro> domain is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.pro.”
Respondent has no rights or legitimate interests in the disputed domain name, since:
- Respondent is not commonly known by the disputed domain name. Neither MORGAN STANLEY nor the disputed domain name is part of Respondent’s name. Prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name;
- Respondent is not a Complainant’s licensee, neither is he otherwise authorized to use Complainant’s mark;
- Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to host links to products and services that compete directly with Complainant’s business;
- Respondent’s alleged intention to use the domain for service non-related to finances, expressed in his response to a demand letter sent by Complainant, does not establish Respondent’s legitimate rights in or bona fide use of the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith, since:
- Respondent’s use of the disputed domain disrupts and competes with Complainant’s business;
- Respondent uses the disputed domain name to profit from Internet users’ confusion by displaying links to products and services that are in direct competition with Complainant’s business;
- Respondent registered and is using the disputed domain name to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY marks;
- Respondent’s continued use and registration of the disputed domain name after receiving the undersigned’s demand letter;
- Complainant’s marks are so famous and registered in many countries throughout the world, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time he registered the confusingly similar domain name.
B. Respondent
Respondent has rights and legitimate interests in the disputed domain. The names “Morgan” and “Stanley” are common and are not to be construed solely for financial services. Additionally, the disputed domain has not yet officially launched. Once it launches, the domain will not offer any financial products or be used as a “parking site.”
C. Complainant’s Additional Submissions
Complainant points out that they made a prima facie case, while Respondent failed to rebut the arguments expressed in the complaint had had not provided any evidences that he is using the disputed domain in connection with a bona fide offering of goods or services.
According to Complainant, Respondent is in the mortgage industry and offers services that compete directly with services offered by Complainant.
Complainant also asserts that Respondent is involved in a pattern of cybersquatting, since on or about the same date that Respondent registered the disputed domain, he also registered several other domain names incorporating the famous marks of other financial institutions, such as AMERICANEXPRESS.PRO and CAPITALONE.PRO.
Exhibit 6 contains copies of numerous Complainant’s registrations belonging to the MORGAN STANLEY family of trademarks registered for various financial services. As follows from the provided evidences, Complainant is the holder of, among others, the MORGAN STANLEY word mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196, registered August 11, 1992).
Complainant is the owner of the domain name MORGANSTANLEY.COM first registered in 1996.
Complainant has provided an extensive set of evidences in support of the fame and reputation of the MORGAN STANLEY trademark (Exhibits 2, 3, 5). A number of the previous panels of the Forum have recognized that MORGAN STANLEY is a well-known mark.
Respondent is the owner of the disputed domain name <morganstanley.pro> registered on December 17, 2015, which is decades after Complainant acquired the rights in its trademark.
Respondent’s business name, Alpine Capital Mortgage, indicates that it purports to offer mortgage services, which are identical to services offered by Complainant.
The disputed domain name of Respondent resolves to a parking website displaying related searches for finance, credit card application, real estate and other relevant services.
On or about the same date he registered the disputed domain name, Respondent registered several other domain names incorporating the famous marks of other financial institutions, such as AMERICANEXPRESS.PRO, CAPITALONE.PRO, JPMORGANCHASE.PRO and LENDINGTREE.PRO
Respondent has not provided any evidences showing that before it had notice of the dispute, it made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
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.
Complainant has registered the MORGAN STANLEY marks with the USPTO (e.g., Reg. No. 1,707,196 for the word mark MORGAN STANLEY, registered on August 11, 1992). The Panel finds that the mentioned trademark registration and the other registrations with the USPTO, provided in Exhibit 6, are sufficient to establish trademark rights for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The <morganstanley.pro> incorporates Complainant’s mark as a whole, eliminating the spacing between the words of Complainant’s mark, and adding the gTLD “.pro.” Previous panels have held that the elimination of the spacing between the words of a complainant’s mark does not serve to adequately distinguish a respondent’s disputed domain from a complainant’s mark. See 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)). Previous panels have also found that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Numerous previous Panels have found no right or legitimate interests when information listed in the WHOIS record does not imply that Respondent can be commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The WHOIS information provided in the Attached Exhibit 7 lists “Alpine Capital Mortgage / Greg Hogan” as the Registrant, which implies no association with the Complainant’s trademark. The Panel therefore finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Furthermore, Respondent uses its disputed domain name to host links competing with the services provided by Complainant, which is evident from Attached Exhibit 8. Prior panels have decided that a respondent’s use of a disputed domain to display competing hyperlinks does not constitute 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respectively, the case records show that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Under the Policy, the burden then 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.”).
The review of Respondent’s response shows that it failed to produce any evidences in support of allegation of bona fide offering of services or preparations for such a bona fide use of the domain name. Respondent’s allegations concerning the developed business plan for the “Morgan Horses” at the location “Stanley Idaho” can be hardly taken to be credible.
It is therefore found that Complainant has satisfied the requirements of ¶ 4(a)(ii)
Complainant contends that Respondent’s use of the disputed domain disrupts and competes with Complainant’s business because Respondent’s domain resolves to a webpage that displays links to products and services that compete with Complainant’s business, which is evident from Attached Exhibit 8. Previous panels have determined that a respondent’s use of a domain to host links that are in direct competition with a complainant’s business constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Thus, Respondent’s disputed domain name competes with and disrupts Complainant’s business per Policy ¶ 4(b)(iii).
Complainant further alleges that Respondent uses the disputed domain name to profit from Internet users’ confusion by displaying links to products and services that are in direct competition with Complainant’s business. Prior panels have held that a respondent engaged in bad faith registration and use where it used a domain to display competing hyperlinks. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Such use of the domain name by Respondent thus qualify for the use in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that because of the long and well-established reputation of Complainant’s MORGAN STANLEY mark in the financial services industry and a large degree of fame acquired by this trademark, Respondent registered the disputed domain with actual knowledge of Complainant’s mark. Previous panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See 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).
It should also be noted that Respondent’s allegation on the common nature of the names “Morgan” and “Stanley” is not relevant, since it is evident that only due to the fame of the mark “MORGAN STANLEY”, Respondent chose to combine the two names together in the domain name.
The Panel thus finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
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.pro> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: February 17, 2016
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