Morgan Stanley v. morganstanley c/o Yideo Jocb
Claim Number: FA1010001352211
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is morganstanley c/o Yideo Jocb (“Respondent”), American Samoa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyae.us>, registered with eNom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 14, 2010; the Forum received a hard copy of the Complaint on October 25, 2010.
On October 15, 2010, eNom, Inc. confirmed by e-mail to the Forum that the <morganstanleyae.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 18, 2010 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following assertions:
1. Respondent’s <morganstanleyae.us> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyae.us> domain name.
3. Respondent registered and used the <morganstanleyae.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is the owner of the MORGAN STANLEY family of marks and has used these marks since 1935 in connection with financial investment and wealth management services. Complainant holds trademark registration for its MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196 issued Aug. 11, 1992).
Respondent, morganstanley c/o Yideo Jocb, registered the <morganstanleyae.us> domain name on September 15, 2010. The disputed domain names resolves to a website which features Complainant’s mark and plagiarized content from Complainant’s official websites and discusses Complainant’s financial services.
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."
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(e), 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.”).
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends it has established rights in its MORGAN STANLEY mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. Here, the Panel finds that Complainant is not required to register its mark within the country of respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant has a trademark registration for its MORGAN STANLEY mark with the USPTO (e.g. Reg. No. 1,707,196 issued Aug. 11, 1992). Pursuant to Policy ¶ 4(a)(i), the Panel finds that Complainant has established rights in its MORGAN STANLEY mark through its trademark registrations with the USPTO.
Complainant contends that Respondent’s <morganstanleyae.us> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Respondent’s disputed domain name differs from Complainant’s mark only by the addition of the letters “ae”, the deletion of a space between the terms of Complainant’s mark, and the addition of the country-code top-level domain (“ccTLD”) “.us.” The letters “ae” are an acronym for the descriptive words “active extension” which relate to Complainant’s investment business. The Panel finds that the addition of letters fails to properly distinguish the disputed domain name from Complainant’s mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). The Panel also finds that the deletion of a space between terms and the addition of a ccTLD do not sufficiently distinguish the disputed domain name from 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 UDRP ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel concludes that Respondent’s <morganstanleyae.us> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the <morganstanleyae.us> domain name. Previous panels have found that once a complainant establishes a prima facie case in support of its allegations, the burden shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Complainant has made a prima facie showing. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights and legitimate interests in the <morganstanleyae.us> domain name under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <morganstanleyae.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not commonly known by the <morganstanleyae.us> domain name. The WHOIS information identifies Respondent as “morganstanley c/o Yideo Jocb,” which indicates that Respondent may be associated with something called “morganstanley,” but there is no additional evidence in the record that would support a finding that Respondent is commonly known by the disputed domain name. Complainant asserts that it has not authorized or licensed Respondent to use or register its MORGAN STANLEY mark with the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <morganstanleyae.us> domain name under Policy ¶ 4(c)(iii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent’s <morganstanleyae.us> domain name resolves to a website which features the MORGAN STANLEY mark numerous times, discusses Complainant’s investment and wealth management services, and displays plagiarized content from Complainant’s official websites. The Panel finds that Respondent’s use of the <morganstanleyae.us> domain name to suggest that the resolving website is sponsored by Complainant, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The resolving website also features purportedly official email addresses which incorporate Complainant’s MORGAN STANLEY mark and may be used to encourage Internet users to disclose personal information. Complainant contends this is part of a fraudulent “phishing” scheme. The Panel finds that Respondent’s use of the <morganstanleyae.us> domain name to operate a phishing scam is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of UDRP ¶¶ 4(c)(i) or (iii)); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent uses the <morganstanleyae.us> domain name to resolve to a website featuring Complainant’s MORGAN STANLEY mark, displaying plagiarized content from Complainant’s official websites, and discussing Complainant’s services from a first person perspective. Complainant contends that Respondent’s use of the disputed domain name disrupts its business since Internet users intending to use Complainant’s financial and investment services may instead be diverted to Respondent’s website due to Respondent’s use of a confusingly similar disputed domain name. The Panel finds that Respondent’s use of the <morganstanleyae.us> domain name disrupts Complainant’s business which is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to UDRP ¶ 4(b)(iii)).
The Panel infers that Respondent likely profits from the phishing scheme on the resolving website through the collection of personal information from Internet users. Internet users searching for Complainant’s services may instead find Respondent’s website due to Respondent’s use of the disputed domain name. Internet users may become confused as to the Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and email addresses previously mentioned. Respondent attempts to profit from this confusion through the collection of personal information from Internet users. The Panel finds that Respondent’s use of the <morganstanleyae.us> domain name constitutes bad faith and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”).
As mentioned previously, the resolving website features purportedly official email addresses on the “Contact Us” page which incorporate Complainant’s MORGAN STANLEY mark and may be used to encourage Internet users to disclose personal information. Complainant argues that this is part of a fraudulent phishing scheme. The Panel finds that Respondent’s use of the <morganstanleyae.us> domain name to operate a “phishing” scheme is further evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel concludes that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyae.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 22, 2010
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