Morgan Stanley v. Khodor Dimassi
Claim Number: FA1604001672287
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Khodor Dimassi (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleyelectronic.com>, <emorganstanleybank.com>,<electronicmorganstanley.com>, <morganstanleyebank.com>,<onlinemorganstanley.com>, <digitalmorganstanley.com>, and <morganstanleydigital.com>, 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.
Mrs. Prathiba M Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2016; the Forum received payment on April 27, 2016.
On April 28, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <morganstanleyelectronic.com>, <emorganstanleybank.com>, <electronicmorganstanley.com>, <morganstanleyebank.com>, <onlinemorganstanley.com>, <digitalmorganstanley.com>, and <morganstanleydigital.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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”).
Independent research done by the Arbitrator demonstrates that as on 4th June 2016 Godaddy has parked the web page for free for the domain name <emorganstanleybank.com>.
On April 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@morganstanleyelectronic.com, postmaster@emorganstanleybank.com, postmaster@electronicmorganstanley.com, postmaster@morganstanleyebank.com, postmaster@onlinemorganstanley.com, postmaster@digitalmorganstanley.com, and postmaster@morganstanleydigital.com. Also on April 29, 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 completed on May 23, 2016.
Complainant’s Additional Submissions were received on May 24, 2016, and they were timely.
On May 26, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mrs Prathiba M Singh 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has rights in the MORGAN STANLEY mark.
The Complainant has attached Exhibit 6 that are copies of USPTO trade mark registrations of the mark MORGAN STANLEY, MORGAN STANLEY CLIENT LINK, MORGAN STANLEY SMITH BARNEY, MORGAN STANLEY WEALTH MANAGEMENT, MORGAN STANLEY BENEFIT ACCESS, MORGAN STANLEY MATRIX, MORGAN STANLEY &CO.INCORPORATED.
Complainant contends to be the owner of the MORGAN STANLEY family of marks and has used marks containing or comprising MORGAN STANLEY in connection with various financial and related services since as early as 1935.
Complainant contends to be the owner of the domain name MORGANSTANLEY.COM as well as thousands of variations. Complainant states to have first registered MORGANSTANLEY.COM in 1996. The Complainant relies upon Exhibit 4 to demonstrate that the domain name MORGANSTANLEY.COM resolves to the Complainant’s primary website located at www.morganstanley.com.
The Complainant alleges that the Respondent’s <morganstanleyelectronic.com>, <emorganstanleybank.com>,<electronicmorganstanley.com>, <morganstanleyebank.com>,<onlinemorganstanley.com>, <digitalmorganstanley.com>, and <morganstanleydigital.com> domain names are confusingly similar as they each incorporate the mark entirely, less the space, with the “.com” generic top-level domain (“gTLD”) added, as well as variations of the following: added “e,” “digital,” “online,” “electronic,” and/or “bank.”
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not a licensee of Complainant and is not commonly known by the disputed domain names. The Complainant alleges that the Respondent has set up the disputed domains to resolve to parked or inactively held pages and has annexed Exhibit 8 in this regard. The Complainant relies upon Exhibit 9 and has also offered to sell the disputed domains to Complainant for tens of thousands of dollars (requesting compensation around representative <electronicbank.com> available for purchase at $44,888.00USD)), thus demonstrating no bona fide offering of goods or services or any legitimate noncommercial or fair use.
The Complainant contends that the Respondent registered and used the disputed domain names in bad faith. In response to a demand letter sent by the Complainant, Respondent replied by offering for sale the disputed domains in excess of out-of-pocket costs (Exhibit 9), imputing Policy ¶ 4(b)(i) bad faith. Because of the fame of the MORGAN STANLEY mark, Respondent must have registered and subsequently used the disputed domain names with actual knowledge of the mark and Complainant’s rights in the mark.
B. Respondent
The Respondent argues that the terms of Complainant’s mark are generic and that its domain names have distinguishing features that set them apart from Complainant’s mark.
The Respondent also alleges that the Complainant was passive for decades with respect to securing his interests and by not acquiring the domains before the Respondent did.
The Whois Record states that disputed domains were registered on April 13, 2016.
C. Additional Submissions
The Complainant raises five points as follows:
1. Third parties have used the names “Morgan” and “Stanley” separately does not rebut Complainant’s evidence of its registered rights in the MORGAN STANLEY mark or show that the Respondent is known by or has a legitimate right to use those names.
The only third party use of “Morgan Stanley” cited by the Respondent is by Complainant’s own licensee, Morgan Stanley Children’s Hospital of New York-Presbyterian, named in honor of the Complainant for its charitable work with the hospital.
2. Respondent’s printout from Facebook of third party account names does not show, by concrete evidence, that some alleged person associated with his “company” in the UK is known by that name.
3 and 4. It is immaterial that the disputed domain names are not identical to Complainant’s mark since they need only be “confusingly similar” under the UDRP. Respondent’s addition of generic and descriptive terms here—including “bank,” which describes Complainant’s business, and “online,” which describes one method through which Complainant conducts business—actually enhances the confusing similarity.
5. The Respondent’s unsupported and dubious claims be set aside about a purported “discussion” he had 25 years ago with an employee of Morgan Stanley that the Complainant did not first register the disputed domain names prior to Respondent is immaterial to the UDRP. While the Complainant has registered numerous domain names that contain or comprise MORGAN STANLEY, under the UDRP, Complainant is not required to defensively register every possible domain name that is confusingly similar to its mark.
Complainant requests that the Panel transfer the disputed domain names to the Complainant.
To the extent Respondent attempts to provide evidence of his purported bona fide use of the disputed domain names in response to this Additional Submission, such evidence should be rejected by the Panel and Respondent relies upon the Forum’s Supp. Rule 7.
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.
FINDINGS
The disputed domains are confusingly similar to the MORGAN STANLEY mark as per Policy ¶ 4(a)(i).
The Respondent does not have rights or legitimate interests in the disputed domain names.
The Respondent registered and used the disputed domains with actual knowledge, thereby in bad faith per Policy ¶ 4(a)(iii).
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
For The Complainant:
The Complainant has contended that it has rights in the MORGAN STANLEY mark and is the owner of MORGANSTANLEY.COM. It has provided evidence of its USPTO registrations at Attached Exhibit 6.
In BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015), it was held that the Complainant’s trademark registrations sufficiently demonstrate its rights pursuant to Policy 4 (a)(i). Complainant’s registration with the USPTO or any other governmental authority adequately prove its rights under Policy ¶ 4(a)(i). OL LLC v. Interrante, FA 681239 (Forum May 23, 2006) was relied upon where it was found that where the Complainant had submitted evidence of its registration with the USPTO such evidence establishes the Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
The Complainant, thus, has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The Complainant contends that the Respondent’s <morganstanleyelectronic.com>, <emorganstanleybank.com>, <electronicmorganstanley.com>, <morganstanleyebank.com>, <onlinemorganstanley.com>, <digitalmorganstanley.com>, and <morganstanleydigital.com> domain names are confusingly similar as they each incorporate the mark entirely, less the space, with the “.com” gTLD added, as well as variations of the following: added “e,” “digital,” “online,” “electronic,” and/or “bank.”
In Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015), it was held that omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.
In TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015), it was held that adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.
In Google Inc v. DktBot.org, FA 286993 (Forum Aug. 4, 2004), it was held that the mere addition of a single letter to the Complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the Complainant’s mark under Policy ¶ 4(a)(i).
In Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) it was held that where a disputed domain name contains the Complainant’s entire trade mark and differs only by the addition of a generic or descriptive phrase and top level domain name, the differences between the domain name and its contained trade mark are insufficient to differentiate one from the other for the purposes of Policy. Jerry Damson Inc v. Tex. Int’l Prop. Assocs, FA 9169991 (Forum Apr. 10, 2007) was relied upon where it was held that the mere addition of a generic top level domain does not serve to adequately differentiate the Domain name from the mark.
The addition of some words along with the mark MORGAN STANLEY especially words like “Digital,” “Electronic,” “Bank” etc., are confusingly similar in as much as there is a strong likelihood as to affiliation and sponsorship of such domain names with the Complainant. The nature of business conducted by the Complainant is closely linked with electronic, digital and other related transactions and instead of obviating the chances of confusion, such addition enhances the chances of confusion.
Thus, the disputed domains are confusingly similar to the MORGAN STANLEY mark as per Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) it was stated that the 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 the respondent to show that it does have rights or legitimate interests.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that Respondent is not a licensee of Complainant nor has the Respondent ever been authorized by the Complainant to register or use the MORGAN STANLEY mark or the disputed domain names. The Respondent has no relationship with the Complainant and is not commonly known by the disputed domain names. The Respondent does not use the domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use.
The Respondent in reply states that the Complainant did not accept its offer to buy the 7 domains for a reasonable price.
In Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015), it was found that the respondent was not commonly known by the disputed domain name where the complainant had not authorized the respondent to incorporate its NAVISTAR mark in any domain name registration.
The Respondent has registered the disputed domain names and copies of the WhoIs records have been attached.
The Complainant also contends and puts up proof as Exhibit 8 to state that the Respondent has set up the disputed domains to resolve to parked or inactively held pages and has also offered to sell the disputed domains to Complainant for tens of thousands of dollars (Exhibit 9) (requesting compensation around representative <electronicbank.com> available for purchase at $44,888.00USD)), demonstrating no bona fide offering of goods or services or any legitimate noncommercial or fair use.
In Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Forum July 17, 2006) it was found that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii));
In Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) it was found that there were no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely [inact]ively held the domain name);
In Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) it was found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that respondent had no rights or legitimate interests in the contested domain name.
The offer to sell the domain names at a huge profit is direct evidence of bad faith in as much as it is evident that the Respondent does not intend to use the same for any legitimate activity or business. Moreover, the offer for sale as contained in Exhibit 8 also reflects upon the mindset of the Respondent who merely wished to trade upon the goodwill that resides in the MORGAN STANLEY mark.
Thus, the Respondent does not have rights or legitimate interests in the disputed domain names.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant has contended that Respondent registered and used the disputed domain names in bad faith. The Respondent replied to a demand letter sent by Complainant, by offering for sale the disputed domains in excess of out-of-pocket costs, imputing Policy ¶ 4(b)(i) bad faith attached as Exhibit 9.
In Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) it was held that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).
The Respondent has not produced evidence about its intentions to utilize the disputed domain names and has attempted to negotiate with the Complainant for the sale of the disputed domain names for tens of thousands of dollars. The Complainant relies upon Exhibit 4 to demonstrate that the domain name MORGANSTANLEY.COM resolves to the Complainant’s primary website located at www.morganstanley.com.
The evidence suggests that Respondent registered the disputed domain names for the purpose of transferring them to Complainant for a profit as per Policy ¶ 4(b)(i).
The Complainant has argued that the Respondent must have registered and subsequently used the disputed domain names with actual knowledge of the mark and Complainant’s rights in the mark. The Complainant relied upon American Express Marketing & Development Corp. v. Domain Admin / Axsiom, FA 1643980 (Forum Dec. 7, 2015) where it was found that bad faith was due to the fame of complainant’s mark and it was difficult to perceive of the circumstances in which respondent would not have known about complainant’s rights and the panel found that respondent had actual knowledge of the mark and complainant’s rights.
The Complainant’s mark is a very reputed mark. The Complainant claims to use the mark with various financial and related services since as early as 1935. The Complainant states that it has over 1000 offices in over 40 countries and in 2014 it has net revenue of US$34,275,000,000 and has been a publicly traded company listed on the New York Stock Exchange since 1986 with over 11 million shares traded daily.
From the evidence produced the Respondent registered and used the disputed domains with actual knowledge, thereby in bad faith per 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 <morganstanleyelectronic.com>, <electronicmorganstanley.com>, <morganstanleyebank.com>, <onlinemorganstanley.com>, <digitalmorganstanley.com>, and <morganstanleydigital.com> <emorganstanleybank.com>, domain names be TRANSFERRED from Respondent to Complainant .
Mrs Prathiba M Singh Panelist
Dated: 6th June 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page