Morgan Stanley v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1701001715021
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstaney.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2017; the Forum received payment on January 31, 2017. Only an English Complaint was served.
On February 2, 2017, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <morganstaney.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 February 2, 2017, the Forum served the English only Complaint and all Annexes, including an English only Written Notice of the Complaint, setting a deadline of February 22, 2017 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@morganstaney.com. Also on February 2, 2017, the English only 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 March 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992).
Respondent’s <morganstaney.com> mark is confusingly similar as it includes the entire MORGAN STANLEY mark, less the space, less the “L,” with the generic top-level domain (“gTLD”) “.com” appended.
Respondent has no rights or legitimate interests in <morganstaney.com>. There is no evidence that Respondent listed in the WHOIS information is commonly known by the MORGAN STANLEY mark. Respondent is not commonly known by the mark, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s mark or use a domain name with the mark. Additionally, the domain name resolves to a website that attempts to phish for Internet user personal information or otherwise place malware on Internet users’ devices, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Finally, Respondent offers the disputed domain name for sale to the public for thousands of dollars.
Respondent registered and is using the <morganstaney.com> in bad faith. Respondent’s registration of the disputed domain name constitutes typosquatting, which demonstrates bad faith. Additionally, the disputed domain name attempts to engage in phishing or place malware on the Internet user’s computer. Further, Respondent offers the domain name for sale to the public for thousands of dollars. Moreover, Respondent used a privacy service when registering the disputed domain name. Respondent also disrupts Complainant’s business by causing initial interest confusion. Finally, Respondent must have had actual or constructive knowledge of Complainant’s marks, given Complainant’s strong reputation and long, well established reputation in the MORGAN STANLEY marks through its exclusive use in financial and investment service industries around the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MORGAN STANLEY mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its MORGAN STANLEY trademark.
Respondent’s at-issue domain name addresses a website that phishes for internet users’ personal information and attempts to distribute malware.
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 (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.”).
Further, pursuant to UDRP Rule 11(a) the Panel finds that persuasive evidence has been adduced by Complainant showing that Respondent is likely conversant and proficient in the English language. Respondent’s has, per the discussion below, targeted an English language trademark by its confusingly similar domain name. The top-level domain name “.online” is also an English word. The Panel also agrees that requiring the translation of all documents in the proceeding to the Czech language would result in Complainant incurring unnecessary additional costs and result in a delay to the proceedings. Importantly, Respondent has not objected to Respondent’s request to move forward in English. Therefore the Panel finds that this proceeding should advance in English. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its MORGAN STANLEY mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
The at-issue domain name consists of Complainant’s entire MORGAN STANLEY trademark less its space and “L” followed by the top-level domain name “.com”. The slight differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also, F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Domain Admin / Whois protection.” The name is not that of the real respondent-in-interest but rather the name of the cloaking service used by Respondent so that Respondent‘s identity is not exposed in the domain name’s Whois record. Further, there is no evidence in the record which suggest that Respondent is known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii)that Respondent is not commonly known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (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).
Respondent’s <morganstaney.com> domain name resolves to a website that attempts to phish for users’ personal information and/or deliver malware to their devices. Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain name.
As discussed below, multiple circumstances are present which compel the Panel to conclude that Respondent acted in bad faith in registering and using the at-issue domain names pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and interests, Respondent uses its <morganstaney.com> domain name to address a website so that Respondent may phish for private information and deliver malware to site visitors. Respondent’s incorrigible use of the domain name is evidence of its bad faith in registering and using the at-issue domain name. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Second, Respondent’s use of the domain name for the intended purpose of confusing internet users into believing that the domain name is related to Complainant is disruptive to Complainant’s business thereby suggesting Respondent’s bad faith under Policy ¶ 4(b)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Next, Respondent engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or will otherwise confuse a misspelled trademark laden domain name with the target trademark. Here, Respondent removes an “L” from Complainant’s trademark and uses the intentional misspelling to form a confusingly similar domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <morganstaney.com> domain name knowing that Complainant had trademark rights in the MORGAN STANLEY trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from <morganstaney.com>’s overt similarity to Complainant’s mark. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some inoffensive reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <morganstaney.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant also claims Respondent demonstrated bad faith under Policy ¶ 4(b)(i) by offering the domain name for sale for thousands of dollars. Complainant submits a single exhibit as evidence. The exhibit appears on its face to be a printout from a third party website which apparently serves visitors a webpage with particular WHOIS information and also contains a section concerning the subject domain name’s availability. In the exhibit’s availability section there is a statement that Respondent’s <morganstaney.com> domain name is for sale and that “[t]he owner of the domain name … has it listed for sale at $4,750.” The veracity of this unauthenticated and foundationless document is questionable since there is no corroborating evidence indicating Respondent has authorized the “for sale” statement or even had knowledge of the statement’s existence. There is thus no basis for finding that the exhibit printout is a credible. Therefore, Complainant’s “for sale” exhibit is disregarded. Additionally, it does not follow from the mere fact of a privacy shield that the real registrant-in-interest is using the shield in furtherance of some nefarious or bad faith pursuit rather than for one of the many benign reasons a registrant might choose to avoid exposing private or personal information publically on the internet. Therefore, the mere fact of a privacy shield, in and of itself, sheds no light on Respondent’s bad faith intent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstaney.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 12, 2017
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