Morgan Stanley v. Morgan Stanley
Claim Number: FA1411001591083
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Morgan Stanley (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyrecruitment.com>, registered with Ascio Technologies, 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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2014; the National Arbitration Forum received payment on November 20, 2014.
On November 26, 2014, Ascio Technologies, Inc confirmed by e-mail to the National Arbitration Forum that the <morganstanleyrecruitment.com> domain name is registered with Ascio Technologies, Inc and that Respondent is the current registrant of the name. Ascio Technologies, Inc has verified that Respondent is bound by the Ascio Technologies, 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 December 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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@morganstanleyrecruitment.com. Also on December 1, 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 December 1, 2014.
On December 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta 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
i. Complainant uses the MORGAN STANLEY mark in connection with its financial, investment and wealth management services.
ii. Complainant owns the MORGAN STANLEY mark through its trademark registrations all over the world, including in the United States and Great Britain.
1. United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992).
2. United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,267,583, registered July 19, 2002).
iii. Complainant operates online through the <morganstanley.com> domain name, which was registered as early as 1996.
i. Policy ¶ 4(a)(i)
1. The <morganstanleyrecruitment.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark, because Respondent has simply added the generic term “recruitment” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <morganstanleyrecruitment.com> domain name, even though the WHOIS database indicates that Respondent is called Morgan Stanley.
a. Respondent lists Complainant’s corporate address in London as its own address, indicating that Respondent has falsely indicated itself to be associated with Complainant.
b. Respondent is neither licensed nor authorized to use the MORGAN STANLEY mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent has failed to make an active use of the disputed domain name.
a. The disputed domain name currently resolves to an inactive page.
5. Respondent uses the disputed domain name to pass itself off as Complainant.
iii. Policy ¶4(a)(iii)
1. Due to Complainant’s long and well established reputation, Respondent must have had knowledge of Complainant and its rights in the mark prior to the registration of the disputed domain name.
2. Respondent has failed to make an active use of the disputed domain name.
B. Respondent
Respondent submitted a timely response.
Complainant owns the MORGAN STANLEY mark through its trademark registrations all over the world, including in the United States and Great Britain. Complainant owns various registrations with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). Respondent registered the disputed domain name on October 24, 2014.
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.
Complainant uses the MORGAN STANLEY mark in connection with its financial, investment and wealth management services. Complainant owns the MORGAN STANLEY mark through its trademark registrations all over the world, including in the United States and Great Britain. Complainant owns various registrations with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). Complainant argues that its rights in the MORGAN STANLEY mark are further demonstrated through trademark registrations with the UKIPO (Reg. No. 2,267,583, registered July 19, 2002). Complainant argues that such registrations are sufficient to establish rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant’s USPTO and UKIPO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <morganstanleyrecruitment.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because Respondent has simply added the generic term “recruitment” to the mark. The Panel notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com” and the removal of the space between the words of the mark. Previous panels have generally found that a domain name differing from a mark by a single generic term does not escape the grasp of confusing similarity, and that the affixation of a gTLD and omission of space between the words of the mark are irrelevant changes under the Policy ¶ 4(a)(i) analysis. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also 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)). As such, the Panel find that Respondent’s <morganstanleyrecruitment.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).
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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <morganstanleyrecruitment.com> domain name, even though the WHOIS information indicates that “Morgan Stanley” is the registrant of the disputed domain name. Complainant argues that Respondent has listed Complainant’s own corporate address in London as its own address in the WHOIS information. See Complainant’s Ex. 3. Further, Complainant argues that it has neither licensed nor authorized Respondent to use the MORGAN STANLEY mark. The Panel points out that Respondent has failed to submit a response to refute any of Complainant’s contentions. The Panel finds that Respondent is not commonly known by the <morganstanleyrecruitment.com> domain name pursuant to Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“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).”).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent has failed to make an active use of the disputed domain name. See Complainant’s Ex. 4. Generally, panels have held that a respondent’s failure to make an active use of a disputed domain name signifies that it has not provided a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of a disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is 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)). The Panel understands that the disputed domain name is inactive, and finds that Respondent’s current non-use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). However, all of Complainant’s arguments come from outside of the specific Policy ¶ 4(b) categories. Previous panels have held that a complainant may demonstrate that a respondent has acted in bad faith under Policy ¶ 4(a)(iii), even if none of the respondent’s actions are under the Policy ¶ 4(b) arguments. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); 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.”). Thus, the Panel considers Respondent’s behavior as bad faith, even though it does not fall within the specific instances laid out in Policy ¶ 4(b).
First, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark. Specifically, Complainant claims that it has numerous trademark registrations in countries all over the world, so it would seem logical that Respondent could easily have found Complainant’s MORGAN STANLEY mark. Additionally, Complainant argues that it has established a long lasting reputation throughout the world, so it is inconceivable that Respondent registered the <morganstanleyrecruitment.com> domain name without some 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, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds 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”).
Next, Complainant argues that Respondent has failed to make an active use of the disputed domain name. As mentioned above, Complainant argues that the disputed domain name resolves to an inactive page. See Complainant’s Ex. 4. Generally, panels have not hesitated to find bad faith in a disputed domain name that does not have an active use. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Consequently, the panel finds that Respondent’s passive holding of the <morganstanleyrecruitment.com> domain name indicates bad faith under 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 <morganstanleyrecruitment.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: December 23, 2014.
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