Morgan Stanley v Richard Mclee
Claim Number: FA1409001581415
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Richard Mclee (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyclientserv.com.co>, registered with GODADDY.COM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2014; the National Arbitration Forum received payment on September 24, 2014.
On September 24, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <morganstanleyclientserv.com.co> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. 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 September 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@morganstanleyclientserv.com.co. Also on September 25, 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 October 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <morganstanleyclientserv.com.co> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyclientserv.com.co> domain name.
3. Respondent registered and uses the <morganstanleyclientserv.com.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers financial services under the MORGAN STANLEY mark. The mark has been registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered on Aug. 12, 1992). Complainant also uses the CLIENTSERV mark in connection with providing news, information, and other services to its clients. This mark has also been registered with the USPTO (Reg. No. 2,322,252, registered Feb. 22, 2000).
Respondent registered the <morganstanleyclientserv.com.co> domain name on August 31, 2014, and uses it for a phishing scheme.
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 Panel finds that Complainant’s trademark registrations for its MORGAN STANLEY and CLIENTSERV marks are sufficient evidence of Policy ¶ 4(a)(i) rights. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <morganstanleyclientserv.com.co> domain name is merely a combination of Complainant’s marks. Combining two of Complainant’s marks greatly enhances the confusing similarity of the disputed domain name. See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks). The addition of the “.com.co,” and the removal of the spaces between Complainant’s marks, do not distinguish the disputed domain name from Complainant’s marks. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <morganstanleyclientserv.com.co> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent has never been authorized to use either of Complainant’s trademarks, and the record bears no evidence indicating that Respondent is known, or does business, as “morganstanleyclientserv.com.co.” The Panel notes that “Richard Mclee” is listed as the registrant of record for the <morganstanleyclientserv.com.co> domain name. The Panel therefore finds that Respondent has not been commonly known by the <morganstanleyclientserv.com.co> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues further that the <morganstanleyclientserv.com.co> domain name is used to host a website nearly identical to Complainant’s website in an illegitimate attempt to trade off Complainant’s goodwill by passing itself off as Complainant. The Panel finds that this is not a fair or noncommercial use under Policy ¶¶ 4(c)(i) and (iii), and demonstrates Respondent’s lack of rights in the disputed domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant argues that Respondent is phishing because it invites visitors to the domain name’s website to enter their MORGAN STANLEY and CLIENTSERV account information into a form, granting Respondent access to their personal and financial information. In Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel agreed that when there was a likelihood for the respondent to abscond with personal information, there could be no rights or legitimate interests vested in that particular respondent for that specific domain name.
The Panel agrees and finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is profiting from a likelihood of confusion by phishing for the personal and financial information of consumers who believe they are transacting with Complainant. The Panel notes the similarities between Respondent’s disputed domain name and Complainant’s official website. Prior panels have held that there is bad faith under Policy ¶ 4(b)(iv) when the panel can agree that the respondent’s actions constitute an attempt to profit on the confusion or likelihood of confusion of Internet users. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel finds that Respondent’s hosting a website that is very similar to Complainant’s is indicative of Policy ¶ 4(b)(iv) bad faith. See also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Respondent’s attempt to pass itself off as Complainant is itself suggestive of bad faith registration and use. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website). The Panel thus finds further bad faith under Policy ¶ 4(a)(iii).
Complainant goes on to argue that Respondent’s use of a website that replicates Complainant’s own website suggests Respondent’s actual knowledge of Complainant’s rights in the MORGAN STANLEY and CLINETSERV marks. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights when registering and using the <morganstanleyclientserv.com.co> domain name, also bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that Complainant has satisfied 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 <morganstanleyclientserv.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 29, 2014
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