Morgan Stanley v. Helen Oily / Helen Oily
Claim Number: FA1312001534319
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Helen Oily / Helen Oily (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgan-stanley-france.com>, registered with Domain.com, LLC.
The undersigned certifies that she has 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 National Arbitration Forum electronically December 12, 2013; the National Arbitration Forum received payment December 12, 2013.
On December 12, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <morgan-stanley-france.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC verified that Respondent is bound by the Domain.com, LLC 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 December 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014, 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@morgan-stanley-france.com. Also on December 12, 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 January 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.
1. Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
a. Complainant’s business offers financial, investment and wealth management services to clients through its hundreds of offices around the world.
b. Complainant owns registrations for the MORGAN STANLEY mark in countries worldwide.
i. United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 registered August 11, 1992).
ii. European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 175,950 registered November 30, 1998).
c. Complainant has continuously used the MORGAN STANLEY mark in connection with its business since as early as 1935.
2. Respondent’s <morgan-stanley-france.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
a. Respondent’s disputed domain name features Complainant’s mark in its entirety with the addition of the geographically descriptive word “France.”
b. Respondent additionally adds the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights to or legitimate interests in the <morgan-stanley-france.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. The WHOIS information for Respondent’s disputed domain name lists “Helen Oily/ Helen Oily” as registrant.
ii. Respondent does not engage in any business under the name MORGAN STANLEY or the MORGAN-STANLEY-FRANCE.COM name.
iii. Respondent is not a licensee of Complainant, and Complainant has never authorized Respondent to use its mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <morgan-stanley-france.com> domain name.
i. Respondent’s disputed domain name resolves to a parked website containing advertisements for third-party businesses offering services that compete with Complainant’s business.
ii. Respondent is presumably receiving click-through fees from the use of the disputed domain name.
4. Respondent has registered and is using the <morgan-stanley-france.com> domain name in bad faith.
a. Respondent’s disputed domain name resolves to a parked website featuring advertisements and hyperlinks for third parties offering financial services that compete with Complainant and thereby disrupt Complainant’s business.
b. Respondent uses the disputed domain name to attract Internet users for commercial gain by confusing consumers as to the affiliation Complainant has with Respondent’s resolving website.
c. Complainant’s prior use and registration of the famous MORGAN STANLEY mark gives Respondent actual, or constructive knowledge of such use and registration.
1. The Panel notes that the WHOIS information states that Respondent’s <morgan-stanley-france.com> domain name was registered December 5, 2013.
FINDINGS:
Complainant established that it has rights to the mark contained in its entirety in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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(e), 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 (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.”).
Identical to or Confusingly Similar
Complainant asserts that it has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i). Complainant explains that its business offers financial, investment and wealth management services to clients through its hundreds of offices around the world. Complainant contends that it owns registrations for the MORGAN STANLEY mark in countries worldwide including with the USPTO (Reg. No. 1,707,196 registered August 11, 1992) as well as with OHIM (Reg. No. 175,950 registered November 30, 1998). Complainant asserts that it has continuously used the MORGAN STANLEY mark in connection with its business since as early as 1935. In the past, panels have routinely found that a complainant has rights in a given mark when it can provide evidence of a registration for a given mark. See Argenta Spaarbank NV v. Argenta, Mailadmin Ltd., D2009-0249 (WIPO June 8, 2009) (finding that Complainant had provided evidence of a trademark registration with the OHIM and had thus established rights in the mark); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant additionally argues under Policy ¶ 4(a)(i) that Respondent’s <morgan-stanley-france.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant asserts that Respondent’s disputed domain name features Complainant’s mark in its entirety with the addition of the geographically descriptive word “France.” Prior UDRP panels have found that adding geographic terms to a complainant’s mark does not sufficiently differentiate it under Policy 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Complainant further points out that Respondent adds the generic top-level domain (“gTLD”) “.com” as well as hyphens between each word in the <morgan-stanley-france.com> domain name. Adding a gTLD and hyphens to domain names does not cause the disputed domain name to overcome a finding of confusingly similar under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds that Respondent’s <morgan-stanley-france.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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 to or legitimate interests in the <morgan-stanley-france.com> domain name under Policy ¶ 4(c)(ii). Complainant further asserts that Respondent is not commonly known by the disputed domain name because the WHOIS information for Respondent’s disputed domain name lists “Helen Oily/ Helen Oily” as registrant. Additionally, Complainant argues that Respondent does not engage in any business under the name MORGAN STANLEY or the MORGAN-STANLEY-FRANCE.COM name. Complainant also claims that Respondent is not a licensee of Complainant, and that Complainant has never authorized Respondent to use its mark in any way. The Panel notes that a respondent is not commonly known by a disputed domain name where there is no evidence on the record, including the WHOIS information, suggesting that respondent is commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel thus finds that Respondent has no rights to or legitimate interests in the disputed domain name and Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <morgan-stanley-france.com> domain name. Complainant notes that Respondent’s disputed domain name resolves to a parked website containing advertisements for third-party businesses offering services that compete with Complainant’s business. Complainant alleges that Respondent receives click-through fees from the use of the disputed domain name. The Panel notes that Complainant states that Exhibit 4 depicts the website that resolves from Respondent’s disputed domain name, however, Exhibit 4 displays a blank page. In this case, the Panel chooses, nonetheless, to go forward with Complainant’s word alone, because prior UDRP panels have concluded that using a confusingly similar domain name to resolve to a website featuring advertisements for third-parties that compete with complainant is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use of a domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel therefore concludes that Respondent has no rights or legitimate interests in the <morgan-stanley-france.com> domain name given that Respondent’s use could be considered neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
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
Next, Complainant argues that Respondent registered and is using the <morgan-stanley-france.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent’s disputed domain name resolves to a parked website featuring advertisements and hyperlinks for third-parties offering financial services that compete with Complainant and thereby to disrupt Complainant’s business. As noted above, Exhibit 4 displays a blank page. Again the Panel proceeds based solely on Complainant’s contentions because prior panels have concluded that using a disputed domain name to resolve to a website featuring third-party links that compete with the complainant disrupts a complainant’s business and is in bad faith. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel finds that Respondent registered and is using the <morgan-stanley-france.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant then claims that Respondent uses the disputed domain name to attract Internet users for commercial gain by confusing consumers as to the affiliation Complainant has with Respondent’s resolving website. Complainant states that Respondent’s disputed domain name resolves to a parked website featuring third-party links to companies offering financial services. Panels have found that this type of use supports findings of bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”). The Panel agrees with Complainant’s contentions and finds that Respondent registered and is using the <morgan-stanley-france.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Complainant’s prior use and registration of the famous MORGAN STANLEY mark gives Respondent actual, or constructive knowledge of such use and registration. Complainant asserts that its trademark registrations for the MORGAN STANLEY mark existed well before the registration of the disputed domain name. The Panel notes that the WHOIS information for Respondent’s <morgan-stanley-france.com> domain name lists a creation date of December 5, 2013. Complainant therefore argues that Respondent had constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and the use Respondent makes of the domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and is using the disputed domain name 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 <morgan-stanley-france.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 20, 2014
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