national arbitration forum

URS FINAL DETERMINATION

 

Morgan Stanley v. Whois Privacy Protection Service by onamae.com et al.

Claim Number: FA1408001573832

 

DOMAIN NAME

<morganstanley.tokyo>

 

PARTIES

Complainant: Morgan Stanley of New York, New York, United States of America.

Complainant Representative: Cowan, Liebowitz & Latman, P.C. of New York, New York, United States of America.

 

Respondent: n/a of Kanagawa, Japan.

 

Shunji Matsuzawa of Kohoku-ku Yokohama-shi, Kanagawa, International, United States of America.

 

Whois Privacy Protection Service by onamae.com of Shibuya-ku, Tokyo, International, JP.

 

REGISTRIES and REGISTRARS

Registries: GMO Registry, Inc.

Registrars: GMO Internet, Inc. d/b/a Onamae.com

 

EXAMINER

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Examiner in this proceeding.

 

Honorable Carolyn Marks Johnson (Ret.), sits as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: August 6, 2014

Commencement: August 20, 2014     

Response Date: August 25, 2014

 

Having reviewed the communications records, the Examiner finds that the National Arbitration Forum discharged its responsibility under URS Procedure  Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .

 

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

 

STANDARD OF REVIEW

Clear and convincing evidence.

 

FINDING OF NO ABUSE  or MATERIAL FALSEHOOD

 

Respondent alleged that Complainant brought this Complaint in an abuse of this proceeding or that Complainant made material falsehoods in the Complaint. The Examiner finds NO abuse and NO material falsehood by Complainant.

 

FINDINGS and DISCUSSION

 

The Examiner finds that NO multiple complainants or multiple respondents are present and no domain name requires dismissal.

 

Findings of Fact:

 

The Complainant is the owner of the U.S. trademark registrations No. 1,707,196 and No. 4,470,389, MORGAN STANLEY, first used in commerce September 16, 1935, and registered August 11, 1992, covering financial goods and services, along with registrations for a family of MORGAN STANLEY marks worldwide.

 

Complainant provided proof of use of the trademark, including use at websites, including “Morgan Stanley Japan.”

 

Legal Findings and Conclusions:

 

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended. The Examiner finds that Complainant met the clear and convincing showing required by URS Procedure 1.2.6 as to each of the three elements discussed below.

 

 

 

IDENTICAL TO OR CONFUSINGLY SIMILAR

 

Complainant met the standard set out in 1.2.6.1 of the URS Procedure since the Complainant proved its right to the valid U.S. trademark registrations No. 1,707,196 and No. 4,470,389, MORGAN STANLEY, first used in commerce September 16, 1935, registered August 11, 1992, covering financial goods and services, along with registrations for a family of MORGAN STANLEY marks worldwide, a trademark that is in current use.

 

Respondent does not challenge Complainant’s trademark rights.

 

The relevant part of the disputed domain name is <MORGAN STANLEY>; the added top-level domain being a required element of every domain name and the geographic addition <Tokyo> are both irrelevant for assessing whether or not a mark is identical or confusingly similar to a protected mark, the two additions in this case do nothing to distinguish the disputed domain name from the Complainant’s trademark.

 

The Examiner finds that the disputed domain name is confusingly similar to Complainant’s protected MORGAN STANLEY mark; Complainant satisfied the elements of URS Procedure 1.2.6.1.

 

NO RIGHTS OR LEGITIMATE INTERESTS

 

Complainant met the standard set out in 1.2.6.2 of the URS Procedure since Complainant has not authorized Respondent to register a domain name containing its protected trademark and Complainant correctly urges that Respondent is not commonly known by the mark or the disputed domain name.

 

Complainant further asserts that Respondent has acquired no legitimate interests in Complainant’s protected mark by purchasing this domain name and holding it passively under a promised intent to not use it for commercial gain but perhaps to make some unknown type of “personal” use for which Respondent has shown neither a plan nor expenditures for development. Further, Respondent maintains in the Response that it may and it may not have had intent to sell the disputed domain name at the time of purchase.  Such elusive promises and assurances do not a bona fide use make and they do not create legitimate interest in a disputed domain name containing another’s protected mark.

 

Accordingly, the Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of URS Procedure 1.2.6.2.

 

BAD FAITH REGISTRATION AND USE

 

Complainant satisfied the requirements of URS Procedure 1.2.6.3.

 

As noted above, Respondent does not dispute Complainant’s trademark rights.

The record shows that the disputed domain name resolves to a parked page. See Complainant, paragraph 7.

 

Respondent concedes knowledge of Complainant’s commercial operations in Tokyo; however, finds no likelihood of confusing similarity between Complainant’s mark and the <morganstanley.tokyo> disputed domain name. See Response, paragraph 4a. Respondent’s submission urges that the two fail the identicality test because Complainant’s mark is a combination of two well-known common names. Neither of these names is in any way associated with Respondent.  Respondent’s description of its acquisition activities and its multiple suggestions of possible intents at the time of purchase establish for the Examiner a clear and convincing determination that Respondent not only knew of Complainant’s protected mark but knew of Complainant’s financial goods and services and intended to opportunistically benefit from the worldwide reputation and whatever goodwill attached to Complainant’s provision of financial goods and services.

 

Inasmuch as Respondent has neither suggested nor described any “personal” use possible for Respondent with these allegedly common names, the Examiner is left with no alterative but to find that Respondent’s intent was to attract more users to Respondent’s own sites for commercial gain and/or to at least confuse Internet users seeking Complainant’s financial goods and services and to divert them to Respondent’s site, similarly for commercial gain. Such knowledge coupled with such conduct supports findings of bad faith registration and use.

 

Respondent’s explanation in the instant case of the lack of intent to commercially exploit the <morganstanley.tokyo> domain name is not persuasive.

 

The Examiner finds that Respondent registered and used or passively held the disputed domain name in bad faith; Complainant satisfied the elements of URS Procedure 1.2.6.3.

 

DETERMINATION

 

After reviewing the parties’ submissions, the Examiner determines that

Complainant demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.

 

<morganstanley.tokyo>

 

 

 

Honorable Carolyn M. Johnson (Ret.), Examiner

Dated:  August 28, 2014