Morgan Stanley v. Houghton Richards Brokerage
Claim Number: FA1707001741852
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Houghton Richards Brokerage (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.realty>, registered with Uniregistrar Corp.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically July 27, 2017; the Forum received payment July 27, 2017.
On July 31, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <morganstanley.realty> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp verified that Respondent is bound by the Uniregistrar Corp registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@morganstanley.realty. Also on August 1, 2017, 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 August 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in this Proceeding:
Complainant Morgan Stanley is a worldwide provider of financial, investment, and wealth management services, including real estate mortgage and real estate investment services. Complainant has rights in the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl., at Attached Ex. 6. Respondent’s <morganstanley.realty> is confusingly similar as the domain name contains the mark in its entirety—less the space—and adds the descriptive or relevant generic top-level domain name (”gTLD”) “.realty.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MORGAN STANLEY mark in any way. Respondent’s <morganstanley.realty> is not being used for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a webpage titled “Domainnamesales” in an apparent attempt to offer <morganstanley.realty> for sale. See Compl., at Attached Ex. 9. Additionally, Complainant’s marks are so well known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and trade on the goodwill associated with Complainant’s marks.
Respondent’s registration and use of <morganstanley.realty> was in bad faith as described by the Policy. Respondent’s offer to sell the disputed domain name permits findings of bad faith registration and use. Further, the disputed domain name causes initial interest confusion, disrupting the business of Complainant. Finally, Respondent clearly had actual and constructive knowledge of the MORGAN STANLEY mark when it registered and subsequently used the disputed domain name.
Respondent’s Allegations in Response:
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent created the disputed domain name April 25, 2017.
Complainant has well-known rights and legitimate interests in its mark.
Respondent has no such rights or legitimate interests although in some circumstances not present here a domain name reseller may acquire rights if it acts without bad faith.
Respondent registered, acquired, and offered to sell a disputed domain name that is confusingly similar to Complainant’s protected mark.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant claims rights in the MORGAN STANLEY mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug 11, 1992). See Compl., at Attached Ex. 6. Registration of a mark with the USPTO establishes rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore finds that Complainant’s registration of the MORGAN STANLEY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <morganstanley.realty> is confusingly similar to Complainant’s MORGAN STANLEY mark, as the domain contains the mark in its entirety, merely omitting the space and appending the descriptive and/or relevant gTLD “.realty.” Omitting a space in a mark does not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not distinguish a disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Nor does addition of a gTLD distinguish a disputed domain name from a Complainant’s mark, particularly when that gTLD is relevant to or descriptive of the Complainant’s mark or business. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA 1594837 (Forum Jan. 22, 2015) (“While the addition of gTLDs are generally considered irrelevant to the confusing similarity analysis, the Panel finds that Respondent’s election of the “.lawyer” and “.attorney” descriptive terms do heighten the likelihood of confusion because Complainant’s MCGUIREWOODS mark is used to promote the services of lawyers and attorneys.”). Complainant asserts its use of its MORGAN STANLEY mark to promote realty-related services. See Compl., at § 7(a)(iii). Accordingly, the Panel finds Respondent’s <morganstanley.realty> is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered and/or acquired a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 <morganstanley.realty> as Respondent is not commonly known by the disputed domain name and Complainant did not authorize Respondent to use the MORGAN STANLEY mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been used. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Servicse” was listed as the registrant of the disputed domain name). The Panel note that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See Compl., at Attached Ex. 7 (listing “PrivacyDotLink Customer 2864809” as registrant name). The Panel notes that the WHOIS information of record identifies Respondent as “Houghton Richards Brokerage.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Complainant argues Respondent’s lack of rights or legitimate interests in the disputed domain name as shown by Respondent’s failure to use the name for a bona fide offering of goods or services and a lack of legitimate noncommercial or fair use. Rather, Complainant contends that the disputed domain name is so similar to Complainant’s marks that the name causes initial interest confusion, which is disruptive to Complainant’s business and goodwill in the MORGAN STANLEY and related marks. Use of a disputed domain name to divert Internet users to an unrelated website does not show rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent has no rights or legitimate interests as shown by its failure to use the disputed domain name for a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant further claims that Respondent’s lack of rights or legitimate interests in <morganstanley.realty> is evident from Respondent’s attempts to sell the disputed domain name. Complainant contends that Respondent’s <morganstanley.realty> redirects to the website for “Domainnamesales” or “DNS,” a domain name broker where the disputed domain name ostensibly will be offered for sale. See Compl., at Attached Ex. 8. Respondent also offered to sell the disputed domain name to Complainant in previous correspondence. See Compl., at Attached Ex. 9. An attempt by a Respondent to sell a disputed domain name can be evidence of a Respondent’s lack of rights and legitimate interests in the name. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel finds that Respondent’s attempts to sell the disputed domain name establishes a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii)
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent’s general and directed offers to sell <morganstanley.realty> indicate that Respondent registered and is using the disputed domain name in bad faith. A general offer to sell a disputed domain name to the public can demonstrate the name was registered and is being used in bad faith. See Staples, Inc. v. lin yanxiao, FA 1617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Similarly, an offer to sell a disputed domain name to a Complainant can also indicate bad faith. See Little Six, Inc. v. Domain For Sale, FA 96967 (Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith under Policy ¶ 4(b)(i)). The Panel recalls that <morganstanley.realty> resolves to a website for a domain name re-seller, and that correspondence indicates Respondent offered to sell the name to Complainant for $300.00. See Compl., at Attached Exs. 8 & 9, respectively. The Panel finds that Respondent’s actions reflect an intent to sell the disputed domain name and finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant finally argues that Respondent had constructive and actual knowledge of Complainant and Complainant’s rights in the MORGAN STANLEY mark at the time Respondent registered and subsequently used its <morganstanley.realty> disputed domain name. Complainant argues that its multiple trademark registrations in the mark and the fame and notoriety of the mark itself establish the likelihood that Respondent had actual knowledge of Complainant’s mark and rights. Although panels have not generally regarded constructive notice as sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds 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 (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 (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").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and/or purchases the disputed domain name and offered to sell it in bad faith; Complainant satisfied the elements of ICANN 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.realty> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 6, 2017.
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