Morgan Stanley v. ICS INC
Claim Number: FA1610001698162
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moganstanleyclientserv.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 October 14, 2016; the Forum received payment on October 14, 2016.
On October 14, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <moganstanleyclientserv.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 October 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@moganstanleyclientserv.com. Also on October 18, 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 November 9, 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 mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Complainant has also registered the CLIENTSERV mark with the USPTO (e.g., Reg. No. 2,322,252, registered Feb. 22, 2000). These registrations demonstrate Complainant’s rights in its marks. The <moganstanleyclientserv.com> domain name is confusingly similar to Complainant’s marks as it wholly incorporates the marks, save for the omission of the letter “r” in “Morgan Stanley” and the affixation of the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the marks or the disputed domain name. 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. Additionally, Respondent has offered the domain name for sale.
Respondent registered and is using the domain name in bad faith. First, Respondent offered the domain name for sale. Second, Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. Third, Respondent has engaged in the tactic of typosquatting. Fourth, Respondent utilized a privacy service in connection with the domain name. Finally, because Complainant’s marks are so famous and registered in many countries, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time the domain name was registered.
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. Complainant has registered the MORGAN STANLEY mark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Complainant has also registered the CLIENTSERV mark with the USPTO (e.g., Reg. No. 2,322,252, registered Feb. 22, 2000). Complainant has rights in these marks through registration with the USPTO. The <moganstanleyclientserv.com> domain name is confusingly similar to Complainant’s marks.
Respondent, ICS INC, registered the <moganstanleyclientserv.com> domain name on January 11, 2012.
Respondent does not have any rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name. Complainant has not authorized Respondent to use its 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. Additionally, Respondent has offered the domain name for sale.
Respondent registered and is using the domain name in bad faith. First, Respondent offered the domain name for sale. Second, Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. Third, Respondent has engaged in the tactic of typosquatting. Fourth, Respondent utilized a privacy service in connection with the domain name. Finally, Respondent had actual knowledge of Complainant’s marks at the time the domain name was registered.
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 <moganstanleyclientserv.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i) as it wholly incorporates the MORGAN STANLEY and CLIENTSERV marks, save for the omission of the letter “r” in “Morgan Stanley” and the affixation of the “.com” gTLD. Also, Respondent’s domain name eliminates the space between the words of Complainant’s MORGAN STANLEY mark.
Respondent does not have any rights or legitimate interests in the <moganstanleyclientserv.com> domain name. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the marks. The WHOIS information lists “ICS INC” as registrant of the domain name. 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 under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Rather, Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. 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)”).
Also, Respondent has offered the domain name for sale. Panels have held that a respondent lacks rights and legitimate interests in a domain name where the respondent offers to sell the domain name for an amount in excess of its out-of-pocket costs associated with the registration of the domain name. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Respondent has offered the domain name for sale. Panels have routinely held that a respondent’s willingness to sell a domain name for an amount in excess of the respondent’s out-of-pocket costs associated with the acquisition of the domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. Therefore, Respondent has engaged in bad faith registration and use of the domain name. See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Google, Inc. v. Petrovich, FA 1339345 (Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Respondent has engaged in the tactic of typosquatting. Specifically, Respondent’s omission of the letter “r” in “Morgan Stanley” is evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Fourth, Respondent utilized a privacy service in connection with the domain name. 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”). Respondent’s domain name resolves to a website that attempts to engage in phishing or installation of malware. These circumstances support a finding of bad faith registration and use under Policy ¶ 4(a)(iii) from Respondent’s use of a privacy service.
Finally, Respondent had actual knowledge of Complainant's marks and rights. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See also 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <moganstanleyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 23, 2016
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