Morgan Stanley v. David Bedford
Claim Number: FA1606001678851
Complainant: Morgan Stanley of New York, New York, United States of America.
Complainant Representative:
Complainant Representative: Cowan, Liebowitz & Latman, P.C. of New York, New York, United States of America.
Respondent: David Bedford of New York, New York, US.
Respondent Representative: «cDavid » «cUnknown» «cBedford»
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: Uniregistrar Corp
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 sits as Examiner.
Complainant submitted: June 9, 2016
Commencement: June 9, 2016
Default Date: June 24, 2016
Having reviewed the communications records, the Examiner finds that the 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") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Although Respondent defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
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, first used in commerce September 16, 1935, covering investment banking, underwriting, distribution and trading of securities, financial goods and services, stock brokerage and research services, along with registration 4,470,389 for computer software to support such goods and services, the service mark CLIENTSERV, Number 2,322,252, at DEAN NWITTER REYNOLDS, IN, first used in commerce 3-0-1999 (sic), trademarks confirmed to be in current use.
Respondent does not challenge Complainant’s trademark rights.
The Examiner finds that the disputed domain name is confusingly similar to Complainant’s protected MORGAN STANLEY and CLIENTSERV marks; 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 trademarks and Complainant correctly urges that Respondent is not commonly known by the marks or the disputed domain name.
Complainant further asserts that Respondent acquired no legitimate interests in Complainant’s protected marks by purchasing this domain name and holding it either passively under a promised intent to use or not to use or to use them for commercial gain even to perhaps make some unknown type of “personal” use for which Respondent has shown neither a plan nor expenditures for development. Further, Respondent did not file a Response. Elusive promises or assurance arising from a mere purchase do not a bona fide use make and they do not create legitimate interest in a disputed domain name containing another’s protected marks.
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 was registered, according to Complainant, to take advantage of and/or exploit the goodwill that attaches to Complainant’s protected marks. Respondent further had actual knowledge of Complainant’s rights in the marks and intended to disrupt Complainant’s commercial operations to Respondent’s own commercial advantage without permission or license from Complainant. The marks used in the domain name, the use and/or intended use and the disruption Respondent would create by using Complainant’s protected marks without permission or license to do so supports findings of bad faith registration and use. See Complainant, page 2, Explanatory Text. Further, Respondents passive holding also would constitute Bad Faith registration and use. See Complaint, page 2, Explanatory Text.
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.
The Examiner independently finds that the Complaint was NOT brought in an abuse of this proceeding and that it contained NO material falsehoods known to the Examiner.
After reviewing the Complainant’s submissions, the Examiner concludes that
the 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:
Honorable Carolyn Marks Johnson (Ret.), Examiner
Dated: June 27, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page