Morgan Stanley v. Sergey Sokolov / n/a
Claim Number: FA1311001531282
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Sergey Sokolov / n/a (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleymortgage.com>, registered with NeoNIC OY.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2013; the National Arbitration Forum received payment on November 22, 2013.
On November 28, 2013, NeoNIC OY confirmed by e-mail to the National Arbitration Forum that the <morganstanleymortgage.com> domain name is registered with NeoNIC OY and that Respondent is the current registrant of the name. NeoNIC OY has verified that Respondent is bound by the NeoNIC OY 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 December 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@morganstanleymortgage.com. Also on December 4, 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 December 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
· Complainant uses the MORGAN STANLEY mark in connection with a variety of financial and investment services, including mortgage services. Complainant caters to a broad spectrum of clients through its institutional and retail lending services. Complainant has registered the MORGAN STANLEY mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,707,196 registered on Aug. 11, 1992).
· Respondent’s <morganstanleymortgage.com> domain name incorporates the entire MORGAN STANLEY mark, and affixes the phrase “mortgage” along with the generic top-level domain (“gTLD”) “.com.”
· Respondent is not known as either MORGAN STANLEY or as the <morganstanleymortgage.com> domain name. According to the WHOIS report, the registrant of the domain name identifies as “Sergey Sokolov/ n/a.” Respondent is not a licensee of Complainant’s, nor has Respondent enjoyed Complainant’s explicit or implicit authorization or endorsement.
· Respondent fails to provide a bona fide offering of goods—the domain name merely provides parked hyperlink content from which Respondent accrues click-through revenues. The presence of these commercial advertisements, especially the competing commercial advertisements, illustrates Respondent’s lack of rights in the domain name.
· Respondent is holding out the <morganstanleymortgage.com> domain name for sale.
· Respondent’s decision to host competing hyperlinks through the <morganstanleymortgage.com> domain name’s website evidences intent to disrupt Complainant’s business in bad faith.
· Respondent is presumably receiving a financial benefit through hosting commercial hyperlink advertisements through the <morganstanleymortgage.com> domain name. Respondent profits through the likelihood that Internet users will confuse Complainant as the source, origin, or endorser of the hyperlinks viewable through the disputed domain name’s websites. The fact that the domain name may be parked by the registrar is of no concern as Respondent is ultimately accountable for the content on the domain name’s website.
· Respondent knew of the MORGAN STANLEY mark and Complainant’s rights in said mark when registering the <morganstanleymortgage.com> domain name.
· Respondent registered <morganstanleymortgage.com> on May 7, 2009.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <morganstanleymortgage.com> domain name, and that Respondent registered and uses the 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 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.”).
Complainant uses the MORGAN STANLEY mark in connection with a variety of financial and investment services, including mortgage services. Complainant has registered the MORGAN STANLEY mark with the USPTO (e.g., Reg. No. 1,707,196 registered on Aug. 11, 1992). USPTO registration estblishes Policy ¶ 4(a)(i) rights in the MORGAN STANLEY mark, regardless of which country houses Respondent. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not known as either MORGAN STANLEY or as the <morganstanleymortgage.com> domain name. Complainant suggests that according to the WHOIS report, the registrant of the domain name identifies as “Sergey Sokolov/ n/a.” Complainant further states that Respondent is not a licensee of Complainant, nor has Respondent enjoyed Complainant’s explicit or implicit authorization or endorsement. Under such circumstances the Panel concludes that Respondent is not known by the domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (the WHOIS information—devoid of any other meaningful or more accurate evidence—illustrated that the respondent did not present itself as being known by the disputed domain name).
Complainant next argues that Respondent fails to provide a bona fide offering of goods—the domain name merely provides parked hyperlink content from which Respondent presumably accrues click-through revenues. Complainant contends that the presence of these commercial advertisements, especially the competing commercial advertisements, illustrates Respondent’s lack of rights in the domain name. The <morganstanleymortgage.com> domain name resolves to a website offering services such as “2% FIXED MORTGAGE RATE” and links to services potentially harmful to Complainant’s lending operations such as “MORTGAGE FORIVENESS PLAN,” as well as unrelated hyperlinks promoting “FLIGHTS TO FT. LAUDERDALE” or “250 FREE BUSINESS CARDS.” The Panel agrees that the use of the disputed domain name to promote hyperlinks to both competing and unrelated third-party websites constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant notes that Respondent is offering the <morganstanleymortgage.com> domain name for sale. A general offer to sell a domain name may serve as evidence of Policy ¶ 4(b)(i) bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant also argues that Respondent’s decision to host competing hyperlinks through the <morganstanleymortgage.com> domain name’s website evidences intent to disrupt Complainant’s business in bad faith. Some of the hyperlinks viewable through the domain name’s resolving website do appear to compete with Complainant’s business. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found the presence of competing hyperlinks did establish a bad faith scheme of disrupting the complainant’s business through the promotion of competing enterprises. The Panel likewise concludes that Respondent’s promotion of competing services indicates Policy ¶ 4(b)(iii) bad faith.
Complainant next states that Respondent is presumably receiving a financial benefit through hosting commercial hyperlink advertisements through the <morganstanleymortgage.com> domain name. Complainant explains that Respondent most likely profits through the prospect that Internet users will confuse Complainant as the source, origin, or endorser of the hyperlinks. The fact that the domain name may be parked by the registrar does not mitigate against Respondent’s bad faith because Respondent is ultimately accountable for the content on the resolving website. As the registrant of the <morganstanleymortgage.com> domain name, it is Respondent who is held accountable for the uses of the domain name. See, e.g., Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page). As such, the Panel Respondent’s use of the confusingly similar domain name amounts to Policy ¶ 4(b)(iv) bad faith as there is a likelihood that Internet users will confuse the competing and unrelated sponsored advertisements as arising from, or as being endorsed by, Complainant. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant also claims that Respondent knew of the MORGAN STANLEY mark and Complainant’s rights in said mark when registering the <morganstanleymortgage.com> domain name. The Panel concludes that it is apparent that Respondent was well aware of Complainant and had actual knowledge of the mark and Complainant's rights when it registered the domain name. Thus, the Panel holds 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleymortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 7, 2014
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