Morgan Stanley v. Balticsea LLC
Claim Number: FA1608001691190
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanletclientserv.com>, registered with Tucows Domains Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2016; the Forum received payment on August 26, 2016.
On August 26, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <morganstanletclientserv.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 August 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2016 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@morganstanletclientserv.com. Also on August 26, 2016, 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 September 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant has registered the MORGAN STANLEY and CLIENTSERV marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992) (Reg. No. 2,322,252, registered Feb. 22, 2000), which demonstrates Complainant’s rights in its marks. Respondent’s <morganstanletclientserv.com> domain name is confusingly similar to Complainant’s marks as it wholly incorporates both marks, merely misspelling the MORGAN STANLEY mark by replacing the letter “y” with the letter “t,” adding the generic top-level domain (“gTLD”) “.com,” and eliminating the spaces between the words of one of Complainant’s marks.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY and CLIENTSERV marks. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. Further, Respondent is offering the domain name for sale.
Respondent registered and is using the domain name in bad faith. First, the domain name is offered for sale. Second, Respondent has engaged in a pattern of bad faith because Panels have found against Respondent in at least ten prior UDRP proceedings. Third, the website to which the domain name resolves attempts to engage in phishing or place malware on Internet users’ computer devices. Fourth, Respondent’s misspelling of Complainant’s MORGAN STANLEY mark is evidence that Respondent is engaged in typosquatting. Fifth, because of the fame of Complainant’s marks, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s marks and rights therein. Finally, Respondent’s use of a privacy service supports an inference of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant has rights in the MORGAN STANLEY and CLIENTSERV marks through registration with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992) (Reg. No. 2,322,252, registered Feb. 22, 2000). Respondent’s <morganstanletclientserv.com> domain name is confusingly similar to Complainant’s marks.
Respondent, Balticsea LLC, registered the domain name on June 27, 2010.
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain name. Respondent is not a licensee of Complainant, nor has Respondent been authorized by Complainant to register or use the MORGAN STANLEY and CLIENTSERV marks. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. Further, Respondent is offering the domain name for sale.
Respondent registered and is using the domain name in bad faith. First, the domain name is offered for sale. Second, Respondent has engaged in a pattern of bad faith registrations. Third, the resolving website attempts to engage in phishing or place malware on Internet users’ computer devices. Fourth, Respondent’s misspelling of Complainant’s MORGAN STANLEY mark shows that Respondent is engaged in typosquatting. Fifth, Respondent registered the domain name with actual knowledge of Complainant’s marks and rights. Finally, Respondent’s use of a privacy service supports an inference of 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 undisputed representations pursuant to paragraphs 5(f), 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 (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 has rights in the MORGAN STANLEY and CLIENTSERV marks under Policy ¶ 4(a)(i) through registration with the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <morganstanletclientserv.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i) as it wholly incorporates both marks, misspelling the MORGAN STANLEY mark by replacing the letter “y” with the letter “t,” adding the gTLD “.com,” and eliminating the spaces between the words of one of Complainant’s marks.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY and CLIENTSERV marks. The WHOIS information lists “Balticsea LLC” as registrant. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. Panels have found that a respondent lacks rights and legitimate interests in a domain name where the respondent uses the domain name to engage in phishing and/or place malware on Internet users’ computers. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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)”).
Respondent is offering the domain name for sale. Panels have consistently held that a respondent’s offer to sell a domain name is evidence that it lacks rights and legitimate interests in the domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Respondent’s domain name is offered for sale. Panels have concluded that a respondent’s offer for sale of a disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). Therefore, Respondent has engaged in bad faith registration and use, in violation of Policy ¶ 4(b)(i).
Respondent has engaged in a pattern of bad faith because Panels have found against Respondent in at least ten prior UDRP proceedings. A respondent demonstrates a pattern of bad faith under Policy ¶ 4(b)(ii) where it has several adverse UDRP rulings. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Therefore, Respondent has engaged in a pattern of bad faith under Policy ¶ 4(b)(ii).
The domain name resolves to a website which attempts to engage in phishing or place malware on Internet users’ computer devices. Panels have held that a respondent’s use of a domain name to engage in phishing behavior and/or to place malware on Internet users’ computer devices constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Forum Dec. 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Respondent’s misspelling of Complainant’s MORGAN STANLEY mark (replacing the letter “y” in the mark with the letter “t”) is evidence that Respondent is engaging in typosquatting. Therefore, Respondent is acting in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Respondent registered the domain name with actual knowledge of Complainant’s marks and rights. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Complainant contends that Respondent’s use of a privacy service supports an inference of bad faith. The consensus view among panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Considering the circumstances of this case, the Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanletclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 6, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page