Morgan Stanley v. MorganStanleyclub
Claim Number: FA1901001826100
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is MorganStanleyclub (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyclub.com>, registered with Guangdong Nicenic Technology Co., Ltd. dba NiceNIC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2019; the Forum received payment on January 21, 2019.
On January 28, 2019, Guangdong Nicenic Technology Co., Ltd. dba NiceNIC confirmed by e-mail to the Forum that the <morganstanleyclub.com> domain name is registered with Guangdong Nicenic Technology Co., Ltd. dba NiceNIC and that Respondent is the current registrant of the name. Guangdong Nicenic Technology Co., Ltd. dba NiceNIC has verified that Respondent is bound by the Guangdong Nicenic Technology Co., Ltd. dba NiceNIC 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 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2019 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@morganstanleyclub.com. Also on February 1, 2019, 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 February 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Morgan Stanley, offers financial, investment, and wealth management services on a global scale. Complainant has rights in the MORGAN STANLEY mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Respondent’s <morganstanleyclub.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the MORGAN STANLEY mark in the domain name and adds the generic term “club” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <morganstanleyclub.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Such use causes initial interest confusion, which disrupts Complainant’s business.
Respondent registered and uses the <morganstanleyclub.com> domain name in bad faith. Respondent attempts to attract users for commercial gain by passing off as Complainant in furtherance of a phishing scheme. Additionally, Respondent’s use of the disputed domain name causes initial interest confusion. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on January 14, 2019.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel finds that the proceeding should be in English.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the dispute domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name, <morganstanleyclub.com> is confusingly similar to Complainant’s valid and subsisting trademark, MORGAN STANLEY. Complainant has adequately established its rights in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic word “club” and the gTLD “.com” to Complainant’s trademark. This is inadequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the dispute domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent apparently fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in furtherance of an apparent phishing scheme. Such use causes initial interest confusion, which disrupts Complainant’s business.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently uses the disputed domain name to pass itself off as Complainant for commercial gain. Use of a disputed domain name to pass oneself off as a trademark holder for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides screenshots of the disputed domain name’s resolving webpage. See Compl. Ex. 8. Additionally, Complainant claims that Respondent’s registration of the disputed domain name under the name “MorganStanleyclub,” and with an address in New York where Complainant’s business is based, is also clearly false and exacerbates confusion.
The Panel finds that Respondent attempts to pass itself off as Complainant for commercial gain. As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Next, Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the domain to phish for users’ private information. Use of a disputed domain name to phish is evidence of bad faith under Policy ¶ 4(a)(iii). 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).”). Here, Complainant’s screenshots of the disputed domain name’s resolving webpage show fields in which users may enter username and password information. See Compl. Ex. 8. Therefore, the Panel finds that Respondent engages in phishing, and therefore registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent registered and uses the disputed domain name in bad faith because the domain name’s resolving webpage causes initial interest confusion. Use of a disputed domain name to cause initial interest confusion between a disputed domain name and a Complainant’s mark is also evidence of bad faith. 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). The Panel agrees that Respondent’s use constituted initial interest confusion and, therefore, finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Finally, Complainant asserts that Respondent’s registration of a domain name that is confusingly similar to the MORGAN STANLEY mark, which is obviously connected with Complainant, indicates that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual notice of Complainant’s prior rights and interests in and to the trademark MORGAN STANLEY.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <morganstanleyclub.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 26, 2019
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