Morgan Stanley v. Ali Dubai
Claim Number: FA1603001666081
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Ali Dubai (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.site>, registered with NameCheap, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2016; the Forum received payment on March 16, 2016.
On March 17, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <morganstanley.site> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 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.site. Also on March 17, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the MORGAN STANLEY mark in connection with its business offering financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant has rights in the MORGAN STANLEY mark through its registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). The <morganstanley.site> 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”) “.site.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Respondent is not licensed or authorized to use Complainant’s mark. Next, 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. Finally, Respondent has offered to sell the disputed domain name to Complainant in excess of its out-of-pocket expenses.
iii) Respondent has registered and is using the disputed domain name in bad faith. First, Respondent offered to sell the disputed domain name in excess of its out-of-pocket costs. Second, Respondent’s use of the disputed domain disrupts and competes with Complainant’s business. Third, 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. Fourth, Respondent used a privacy service to shield its identity. Fifth, Respondent registered the disputed domain with actual knowledge of Complainant’s mark.
B. Respondent
Respondent did not submit a formal response in the instant proceedings. The Panel notes that the disputed domain name was registered on February 21, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 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. Complainant alleges registration of the MORGAN STANLEY mark with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). Complainant contends that its USPTO registration demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark 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)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <morganstanley.site> domain is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark while eliminating the spacing between the words of Complainant’s mark, and adding the gTLD “.site.” 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 the gTLD “.site” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Retail Royalty Company and AE Direct Co LLC v. wang mo ran, FA 1654301 (Nat. Arb. Forum Feb. 5, 2016) (“The Panel finds that Respondent’s <aeo.site> domain name is identical to Complainant’s AEO mark under Policy ¶ 4(a)(i).”). As such, this Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Ali Dubai.” As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant contends 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 because Respondent uses its disputed domain name to host competing links. 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). Therefore, the Panel finds 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).
During the initial e-mail exchanges between Complainant and Respondent, Respondent offered to sell the disputed domain name to Complainant for $7,000. Complainant asserts Respondent’s offer to sell for an amount disproportionate of out-of-pocket cost demonstrates a lack of legitimate rights or interests in the disputed domain name. Complainant’s position is supported by UDRP precedent. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Therefore, this Panel agrees that Respondent’s offer for sale in excess of out-of-pocket costs additional evidence of no rights or legitimate interests under Policy ¶ 4(a)(ii).
As noted above, during an email exchange between Complainant and Respondent, Respondent offered to sell the disputed domain name to Complainant for $7,000. Given the recentness of the registration of the disputed domain name, Complainant argues that this amount is excessive compared to Respondent’s registration expenses. Panels have held that an offer to sell for in excess of out-of-pocket costs supports a finding of bad faith under Policy ¶ 4(b)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Respondent is advertising the <bigtow.com> domain name for sale for $5,000. Furthermore, Respondent offered to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Thus, this Panel agrees that Respondent’s offer to sell the disputed domain for $7,000 exceeds the offer for sale in the Towmaster, Inc. case and therefore easily crosses the threshold of out-of-pocket expenses sufficient to declare bad faith per Policy ¶ 4(b)(i).
Complainant asserts that Respondent’s use of the disputed domain disrupts and competes with Complainant’s legitimate business purpose. Respondent’s domain resolves to a webpage that displays links to products and services that compete with Complainant’s business. 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).”). Accordingly, the Panel finds that Respondent’s disputed domain name competes with and disrupts Complainant’s business per Policy ¶ 4(b)(iii).
Complainant alleges that Respondent is profiting 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). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the MORGAN STANELY mark. Complainant argues that the extensive number of trademarks held by Complainant for the mark, the fame and notoriety surrounding the mark, and Respondent’s offering goods and services that compete directly with Complainant’s use of the mark indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers from the notoriety of Complainant’s mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it agrees that Respondent has registered and used the disputed domain name in bad faith under 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.site> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 18, 2016
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