Morgan Stanley v. ICS INC.
Claim Number: FA1307001509306
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyclietserv.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2013; the National Arbitration Forum received payment on July 11, 2013.
On July 17, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <morganstanleyclietserv.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2013 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@morganstanleyclietserv.com. Also on July 17, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
i. Respondent is not commonly known by the domain name.
ii. The disputed domain name resolves to a “parked” website.
iii. Respondent’s typosquatting of Complainant’s CLIENTSERV mark is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name.
i. Respondent is offering the disputed domain name for sale for a price that far exceeds the registration costs of the domain.
ii. Respondent has a history of cybersquatting against Complainant.
iii. The disputed domain name resolves to a website that contains advertisements for and hyperlinks to third parties that offer financial services that compete with Complainant’s financial services.
iv. Presumably, Respondent receives a financial benefit in the form of click-through fees from these competitors of Complainant.
v. The fact that Respondent used a common misspelling of Complainant’s CLIENTSERV mark is further evidence of prior knowledge.
vi. Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time it registered the confusingly similar domain name. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY and CLIENTSERV marks when it chose and registered its domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, provides financial, investment, and wealth management services. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (e.g., Reg. No. 1,707,196, registered August 11, 1992); and for the CLIENTSERV mark (Reg. No. 2,322,252, registered February 22, 2000).
Respondent, ICS INC., registered the <morganstanleyclietserv.com> domain name on December 6, 2011. The disputed domain name resolves to a website that contains advertisements for and hyperlinks to third parties that offer financial services that compete with 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."
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(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.”).
The Panel finds that Complainant’s registration of the MORGAN STANLEY and CLIENTSERV marks with the USPTO sufficiently evidences its rights in the marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Although Respondent appears to reside in the Cayman Islands, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides and operates so long as it can demonstrate rights in the mark in some jurisdiction. 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 asserts that Respondent’s domain name, <morganstanleyclietserv.com>, incorporates Complainant’s MORGAN STANLEY mark in whole, and uses a misspelling of Complainant’s CLIENTSERV mark by deleting the letter “n.” Respondent’s combination of Complainant’s marks does not distinguish Respondent’s domain name from Complainant’s marks under Policy ¶ 4(a)(i). See McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding confusing similarity where Respondent combined Complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name). Respondent’s removal of a letter does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent’s addition of the gTLD “.com” and elimination of spaces also are irrelevant in distinguishing the disputed domain name from Complainant’s marks under a Policy ¶ 4(a)(i) determination. 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 Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <morganstanleyclietserv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks under Policy ¶ 4(a)(i).
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 Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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).
Complainant asserts that Respondent is not commonly known by the domain name. Complainant argues that Respondent does not engage in any business or commerce under the name MORGAN STANLEY, CLIENTSERV, or <morganstanleyclietserv.com>. Complainant further asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY or CLIENTSERV marks or <morganstanleyclietserv.com> domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not known by the <morganstanleyclietserv.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that the disputed domain name resolves to a “parked” website. Complainant asserts that Respondent’s <morganstanleyclietserv.com> domain name resolves to a website with advertisements for and hyperlinks to third parties, especially those that compete with Complainant’s services. Respondent’s website includes links to “Morgan Stanley,” “Smith Barney Mutual Funds,” “Citigroup Credit Card.” Complainant claims that Respondent is receiving click-through fees. Prior panels have concluded that a respondent’s use of a domain name to provide a parking webpage is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding 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)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not using the <morganstanleyclietserv.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant alleges that Respondent’s typosquatting of Complainant’s CLIENTSERV mark is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent deletes the letter “n” in Complainant’s CLIENTSERV mark in its <morganstanleyclietserv.com> domain name. The Panel finds that Respondent has engaged in typosquatting, showing that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent is offering the <morganstanleyclietserv.com> domain name for sale for $799, which is a price that far exceeds the nominal registration and maintenance costs of a domain name. See Exhibit 6. In Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), the panel found that respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. Consequently, the Panel finds that Respondent’s offer to sell the domain name for excess its out-of-pocket costs demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(i).
Complainant claims that Respondent has a history of cybersquatting against Complainant. Complainant alleges that it recently filed a UDRP complaint against Respondent for typosquatting the <morganstanleyclientserv.com> domain name, which is based on the MORGAN STANLEY and CLIENTSERV marks, and resulted in a finding of bad faith and a transfer of the domain name to Complainant. See Morgan Stanley v. ICS INC., FA 1498532 (Nat. Arb. Forum June 8, 2013). Complainant also asserts that Respondent has a general history of cybersquatting. See Target Brands, Inc. v. Fundacion Private Whois/ Domain Administrator, FA 1498044 (Nat. Arb. Forum June 25, 2013); Time Warner Inc. v. michal restl c/o Dynadot Privacy, FA 1497719 (Nat. Arb. Forum June 13, 2013). Therefore, the Panel finds that Respondent’s history of UDRP proceedings, resulting in findings of bad faith and transfer of the domain names, is evidence of Respondent’s pattern of bad faith registration under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant alleges that the <morganstanleyclietserv.com> domain name resolves to a website that contains advertisements for and hyperlinks to third parties that offer financial services that compete with Complainant’s financial services. Respondent’s use of the disputed domain name disrupts Complainant’s legitimate business. Therefore, the Panel finds that Respondent registered and is using the <morganstanleyclietserv.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business.
Complainant argues that Respondent receives click-through fees from Respondent’s listing of links to competitors of Complainant on its disputed domain name. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel concluded that “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Therefore, the Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Complainant argues that the fact that Respondent used a common misspelling of Complainant’s CLIENTSERV mark is further evidence of Respondent’s prior knowledge of Complainant’s mark. In Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003), the panel held that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).” Thus, the Panel finds that Respondent has engaged in typosquatting, demonstrating bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent was aware of Complainant’s MORGAN STANLEY and CLIENTSERV marks when it chose and registered the <morganstanleyclietserv.com> domain name. The Panel finds that Respondent had actual knowledge of Complainant’s mark. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyclietserv.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 24, 2013
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