Morgan Stanley v. Alexander Matos
Claim Number: FA1407001571953
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Alexander Matos (“Respondent”), represented by David S. Dessen, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iotmorganstanley.com>, registered with GODADDY.COM, LLC.
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2014; the National Arbitration Forum received payment on July 28, 2014.
On July 30, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <iotmorganstanley.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@iotmorganstanley.com. Also on July 31, 2014, 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.
A timely Response was received and determined to be complete on August 15, 2014.
Complainant’s Additional Submission was received on August 18, 2014.
On August 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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
In its Complaint, Complainant contends, in relevant part, as follows:
· Complainant has “hundreds of offices in dozens of countries” and “offers a full range of financial, investment and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities.”
· Complainant and its predecessors-in-interest have used the MORGAN STANLEY family of marks – “which represent some of the most famous marks in the financial world” -- since at least as early as 1935.
· Complainant owns trademark registrations for the MORGAN STANLEY family of marks “in countries all over the world,” including U.S. Reg. Nos. 1,707,196; 2,968,441; 3,096,321; 2,852,094; 2,872,848; 2,919,873; and 2,759,476.
· The phrase “iot” in the Disputed Domain Name is an acronym for “internet of things,” and “Complainant has offered financial services concerning the ‘internet of things.’”
· The Disputed Domain Name resolves to a parking page.
· Respondent offered to sell the Disputed Domain Name and, when contacted by Complainant, “stated that he was in negotiations to sell the domain name in dispute to a third party and also offered to sell it to Complainant instead.”
· Neither the Disputed Domain Name nor the MORGAN STANLEY trademark is a part of Respondent’s name and Respondent is not commonly known by either of those names; Respondent is not authorized by Complainant to use the MORGAN STANLEY trademark; and Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods and services or for any legitimate purpose.
· “There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered its domain name, and in fact chose the domain name because it was confusingly similar to Complainant’s well-known mark and intended to capitalize on that confusion to attract Internet users to its webpage. This alone constitutes evidence of bad faith.”
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
· “The IOT (Internet of Things) qualifier which is clearly understood to relate to physical items connected to the Internet that appears before Complainant’s mark, contrary to Complainant’s contention, distinguishes Respondent’s domain from Complainant’s well understood financial service business.”
· “Complaint has offered no evidence and, therefore, has not proven that Respondent has no rights or legitimate interests in respect of IOTMORGANSTANLEY.COM.”
· “Lacking any credible evidence of bad faith on the part of Respondent, Complainant asks the Panel to reach the unreasonable conclusion that lack of use of the web site for the first 17 days of its existence is proof of bad faith.”
· “Respondent offered to voluntarily transfer ownership of the domain name in exchange for Morgan Stanley releasing any other claim it might have in connection with Respondent’s registration and use of the domain name…. The obvious reason Morgan Stanley is unwilling to provide Respondent with a Release where the only thing Respondent did was register a domain name, a domain name Respondent was willing to voluntarily transfer to Complainant, is that Morgan Stanley intends to use the expected favorable decision from this panel as a basis for additional claims against Respondent.”
C. Additional Submissions
In its Additional Submission, Complainant contends, in relevant part, as follows:
· “Respondent’s response, which does not cite and is contrary to well-established precedent, fails to counter the prima facie case established by Complainant in its Complaint. Respondent does not even attempt to provide any reason or justification for his registration and use of a domain name that incorporates in full Complainant’s famous MORGAN STANLEY mark or his offers to sell the dispute domain name to a third party and to Complainant. Respondent’s utter failure to provide any explanation for his actions constitutes an admission that Respondent has no legitimate interest or rights in the disputed domain name and that Respondent registered and used the disputed domain name in bad faith.”
· “Complainant here did offer to settle the instant proceeding on reasonable terms. As made clear by Respondent’s own Exhibit 8, Complainant offered to dismiss the proceeding if Respondent voluntarily transferred the disputed domain name to Complainant. The undersigned counsel even sent to Respondent’s counsel a draft joint stay of proceedings in order to release the registrar lock on the disputed domain name and effectuate the transfer. Respondent refused to accept this offer without a full release of all claims against him. Complainant would not, however, agree to provide Respondent with the full release he requested. Complainant cannot be found to have acted in bad faith for refusing to relinquish a legal right to which it is entitled, especially since Respondent’s original response to Complainant’s demand letter originally stated that he was in the process of selling the disputed domain name to an undisclosed third party (and also offered to sell the disputed domain name to Complainant).”
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s MORGAN STANLEY trademark, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used 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.
Based upon the trademark registration cited by Complainant described above, it is apparent that Complainant has rights in the MORGAN STANLEY mark. As to whether the Disputed Domain Name is identical or confusingly similar to the MORGAN STANLEY mark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “iotmorganstanley”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
Given the strength of the MORGAN STANLEY marks, the addition of the letters “iot” in the Disputed Domain Name do not eliminate any confusing similarity. See, e.g., Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).
Accordingly, the Panel finds that Complainant has proven the first element of the UDRP.
Complainant has argued that neither the Disputed Domain Name nor the MORGAN STANLEY trademark is a part of Respondent’s name and Respondent is not commonly known by either of those names; Respondent is not authorized by Complainant to use the MORGAN STANLEY trademark; and Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods and services or for any legitimate purpose
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, although Respondent has submitted a response, it does not substantively address the merits of Complainant’s legal arguments and has offered no “appropriate allegations or evidence.”
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. UDRP, paragraph 4(b).
Complainant does not specify which, if any, of these four factors establishes bad faith here, but in any event the four factors are non-exhaustive. See, e.g., DreamWorks Animation L.L.C. v. African American Film Network, WIPO Case No. D2013-1482 (““the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith”) (internal punctuation and citations omitted).
Here, the panel agrees with the decisions cited by Complainant regarding bad faith: Red Bull GmbH v. Tommy Ortiz, WIPO Case No. D2011-2222 (“where a very well-known trade mark is incorporated into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”); Barclays Bank PLC v. Ho Lo, WIPO Case No. D2011-1322 (“[b]ecause Complainant's trademark is well-known, and because Respondent has neither sought to justify its registration in the disputed domain name, nor justified it, the Panel draws the inference that Respondent registered the disputed domain name with a commercial motive, i.e., that it intended ‘commercial gain’”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iotmorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: September 3, 2014
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