Morgan Stanley v. Morgan Stanleysinc
Claim Number: FA1407001572467
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Morgan Stanleysinc (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleysinc.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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2014; the National Arbitration Forum received payment on July 30, 2014.
On July 31, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <morganstanleysinc.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 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@morganstanleysinc.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 makes the following contentions:
1. Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
a. Complainant 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 has used the MORGAN STANLEY mark continuously since at least 1935.
b. Complainant owns registrations for the MORGAN STANLEY mark internationally, including the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit 2.
c. Respondent’s <morganstanleysinc.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
i. Respondent adds the generic corporate designation “inc.” the letter “s” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights and legitimate interests in the <morganstanleysinc.com> domain name.
a. Respondent is not commonly known by the disputed domain name or Complainant’s MORGAN STANLEY mark.
i. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the disputed domain name or Complainant’s mark.
ii. Even though the WHOIS information states that Respondent is called “Morgan Stanleysinc,” upon information and belief, Respondent has falsely indicated itself as, or associated with, Complainant.
b. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate purpose.
i. Respondent’s disputed domain name does not resolve to an active website.
3. Respondent registered and is using the <morganstanleysinc.com> domain name in bad faith.
a. Respondent has failed to make an active use of the disputed domain name.
b. Respondent was aware of Complainant and Complainant’s rights in the MORGAN STANLEY mark when it chose to register the disputed domain name, based on the similarity between the domain name and Complainant’s mark as well as Complainant’s history of use and recognition in the community.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a long established United States company that offers a full range of financial, investment and wealth management service
2. Complainant owns registrations for the MORGAN STANLEY mark internationally, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992).
3. Respondent registered the <morganstanleysinc.com> domain name on July 18, 2014.
4. By registering the disputed domain name, Respondent has falsely indicated itself as, or associated with, Complainant.
5. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate purpose.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i). Complainant asserts that its company 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 contends that it has used the MORGAN STANLEY mark continuously since at least 1935. Complainant provides evidence that it owns registrations for the MORGAN STANLEY mark internationally, including with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). See Complainant’s Exhibit 2. Panels have found that, regardless of the location of the parties, the registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant asserts that Respondent’s <morganstanleysinc.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent adds the generic corporate designation “inc,” the letter “s” and the gTLD “.com” to Complainant’s MORGAN STANLEY mark. In Venator Group Retail Inc v. Syed Hussain dba MIC, FA 100706 (Nat. Arb. Forum December 7, 2001) the panel held, “The addition of “inc” to Complainant’s FOOT LOCKER mark does not distinguish the disputed domain name from Complainant’s mark”. The Panel also notes that Respondent removed the space between the words in 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 Policy ¶ 4(a)(i). The Panel therefore concludes that Respondent’s <morganstanleysinc.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY mark, making only the minor alterations referred to above;
(b) By registering the disputed domain name, Respondent has falsely indicated itself as, or associated with, Complainant;
(c) Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate purpose;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant asserts that Respondent has no rights and legitimate interests in the <morganstanleysinc.com> domain name under Policy ¶ 4(c)(ii). In so arguing, Complainant claims that Respondent is not commonly known by the disputed domain name or Complainant’s MORGAN STANLEY mark. Complainant alleges that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the disputed domain name or Complainant’s mark. Complainant points out that even though the WHOIS information states that Respondent is called “Morgan Stanleysinc,” upon information and belief, Complainant believes that Respondent has falsely indicated itself as, or associated with, Complainant. The panel in City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) stated, “Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).” Because Respondent has not submitted a response to provide affirmative evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant also states that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate purpose. Complainant contends that Respondent’s disputed domain name does not resolve to an active website. The panel inThermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) found that the respondent’s non-use of the disputed domain names demonstrated that the respondent was not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Similarly, the Panel concludes that Respondent’s failure to make an active use of the <morganstanleysinc.com> domain name does not confer rights or legitimate interests in that domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel notes that when a respondent’s actions do not fall directly under a particular circumstance set out in ¶ 4(b) the panel may look beyond ¶ 4(b) to the totality of the circumstances when analyzing bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). The Panel therefore chooses to infer bad faith from the totality of the circumstances under Policy ¶ 4(a)(iii).
Secondly, Complainant contends that Respondent registered and is using the <morganstanleysinc.com> domain name in bad faith under Policy ¶ 4(a)(iii). Complainant alleges that Respondent has failed to make an active use of the disputed domain name because the disputed domain name does not resolve to a website. The Panel notes that the panel in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) concluded that respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel finds in accordance with previous panels, and concludes that Respondent’s actions indicate bad faith under ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent was aware of Complainant and Complainant’s rights in the MORGAN STANLEY mark when it chose to register the disputed domain name. Complainant bases its allegations on the similarity between the domain name and Complainant’s mark as well as Complainant’s history of use and recognition in the community. Complainant also points out that Respondent’s <morganstanleysinc.com> domain name was registered on July 19 2014 which was significantly after Complainant registered the MORGAN STANLEY mark. The Panel here finds that any arguments of bad faith based on constructive notice are insufficient, however, because UDRP panels generally decline to find bad faith as a result of constructive knowledge. 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."). Still, the Panel infers that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MORGAN STANLEY mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Accordingly, it is Ordered that the <morganstanleysinc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: September 11, 2014
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