Morgan Stanley v. M faris Hayek
Claim Number: FA1510001642458
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is M faris Hayek (“Respondent”), New York, USA.
REGISTRAR AND DOMAIN NAMES
The domain names at issue are <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2015; the Forum received payment on October 14, 2015.
On October 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2015 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@morganstanley-bh.com, postmaster@morganstanley-ksa.com, postmaster@morganstanley-sa.com. Also on October 16, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the MORGAN STANLEY mark in connection with its financial services. Complainant has registered the MORGAN STANLEY mark with, among other places, the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992), demonstrating rights in the mark. Respondent’s <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names are confusingly similar to the MORGAN STANLEY mark as each incorporates the mark fully, eliminates spacing between the words of the mark, and incorporates a hyphen and the generic top-level domain (“gTLD”) “.com.” Further, each domain name merely adds a geographic descriptor: “bh” for Bahrain, and “ksa” or “sa” which stand for “Saudi Arabia.”
2. Respondent has no rights or legitimate interests in the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names. Respondent is not commonly known by the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names, nor has Complainant given Respondent license to incorporate the MORGAN STANLEY mark in connection with domain name registrations. Further, Respondent has failed to utilize the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the domains fail to resolve to active websites. See Compl., at Attached Ex. 8.
3. Respondent registered and used the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names in bad faith. Respondent offered to sell the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names to Complainant. See Compl., at Attached Ex. 9. Respondent registered three infringing domains in the instant case, indicating a pattern of bad faith registrations under Policy ¶ 4(b)(ii). Because Complainant’s MORGAN STANLEY mark is well known and has garnered significant goodwill, Respondent had actual knowledge of the mark and Complainant’s rights therein upon registration of the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names. Last, Respondent’s inactive holding of the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names is an indication of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. Respondent’s domain names are confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names, and that Respondent registered and uses the domain name 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's un<morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> 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.”).
Complainant uses the MORGAN STANLEY mark in connection with its financial services. Complainant has registered the MORGAN STANLEY mark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992), and argues that its registration demonstrates its rights in the mark per Policy ¶ 4(a)(i). The Panel agrees that Complainant’s USPTO registration satisfies the rights requirement of Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”).
Next, Complainant argues that Respondent’s <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names are confusingly similar to the MORGAN STANLEY mark as each incorporates the mark fully, eliminates spacing between the words of the mark, and incorporates a hyphen and the generic top-level domain (“gTLD”) “.com.” Such alterations have been held as insignificant in distinguishing domain names from marks in which a complainant has rights. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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)).
Further, each domain name merely adds a geographic descriptor: “bh” for Bahrain, and “ksa” or “sa” which stand for “Saudi Arabia.” Such geographic qualifiers fail to distinguish the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domains from Complainant’s mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). The Panel finds that the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names are confusingly similar to the MORGAN STANLEY mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names. Complainant asserts that Respondent is not commonly known by the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names, nor has Complainant given Respondent license to incorporate the MORGAN STANLEY mark in connection with domain name registrations. Thus, there is no evidence in the record to establish that Respondent is commonly known by the domain names. See, e.g., Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant contends that Respondent has failed to utilize the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the domains fail to resolve to active websites. The failure to make an active use of <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names is an indication that Respondent has no rights or legitimate interests in such domains. 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 dipsuted 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)). Therefore, Panel agrees that Respondent has failed to demonstrate rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant urges that Respondent registered and uses the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names in bad faith. The record indicates that Respondent offered to sell the domain names to Complainant: “[I]f your client would be willing to provide me with a fair monetary compensation, I’d be willing to surrender my rights to my domain names immediately.” Similar offers to sell domain names have been found to establish bad faith registration under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Therefore, the Panel agrees that Respondent’s general offer to sell the domain names to Complainant indicates bad faith pursuant to Policy ¶ 4(b)(i).
Further, Respondent by registering three infringing domains in the instant case, has engaged in a pattern of bad faith registrations under Policy ¶ 4(b)(ii). In EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005), the panel found that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii). Accordingly, the Panel agrees that Respondent’s registration of the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names are sufficient to constitute a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii).
Complainant also contends that in light of the fame and notoriety of Complainant's MORGAN STANLEY mark, it is inconceivable that Respondent could have registered the <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees. 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).
The Panel finds 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 <morganstanley-bh.com>, <morganstanley-ksa.com>, and <morganstanley-sa.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 16, 2015
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