Morgan Stanley v. William Snyder
Claim Number: FA1702001716329
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is William Snyder (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyproperties.us>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2017; the Forum received payment on February 7, 2017.
On February 8, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleyproperties.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2017 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@morganstanleyproperties.us. Also on February 8, 2017, 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 March 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 usTLD 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 usTLD Policy, usTLD 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
1. Complainant holds the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992), and uses it in connection with its business in the financial world. Respondent’s <morganstanleyproperties.us> is confusingly similar to the MORGAN STANLEY mark because it incorporates the mark completely, less the space, and merely adds the term “properties” and the country-code top-level domain (“ccTLD”) “.us.”
2. Respondent has no rights or legitimate interests in <morganstanleyproperties.us>. Respondent has not been commonly known by the domain name. Respondent has also not offered any bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, the website is used to compete with Complainant’s financial services offerings. See Compl., at Attached Ex. 8. Respondent is offering fake goods and services, and even includes a phone number that directs to the U.S. federal government contact center. See Compl., at Attached Ex. 9.
3. Respondent registered or used <morganstanleyproperties.us> in bad faith. Complainant is bringing a separate UDRP dispute against Respondent for another allegedly infringing domain name, <morganstanelyemployment.com>, which resolves to a webpage soliciting purported employees for “Morgan Stanley Properties.” See Compl., at Attached Ex. 11. Respondents use of the domain name to offer services that compete with those of Complainant is evidence of bad faith under Policy ¶ 4(b)(iv). Further, Respondent likely had actual or constructive knowledge of Complainant when registering or using the domain name, showing nonexclusive bad faith under Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent did not submit a Response to the Complaint.
1. Respondent’s <morganstanleyproperties.us> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyproperties.us> domain name.
3. Respondent registered or used the <morganstanleyproperties.us> 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 claims it has the MORGAN STANLEY mark through its registrations with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992), and purportedly uses it in connection with its business in the financial world. See Compl., at Attached Ex. 5. USPTO registrations may confer rights under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (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).”). The Panel agrees that Complainant’s USPTO registration sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <morganstanleyproperties.us> is confusingly similar to the MORGAN STANLEY mark because it incorporates the mark completely, less the space, and merely adds the term “properties” and the ccTLD “.us.” These changes have been considered inconsequential under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Therefore, the Panel agrees that <morganstanleyproperties.us> is confusingly similar to the MORGAN STANLEY mark under 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 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in <morganstanleyproperties.us>. Complainant argues that Respondent has not been commonly known by the disputed domain name and that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. While the WHOIS lists “William Snyder” as registrant of record, the Panel agrees that the evidence does not suggest Respondent as commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Further, Complainant argues that Respondent has also not offered any bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, the website is used to compete with Complainant’s financial services offerings. See Compl., at Attached Ex. 8. Respondent is allegedly offering fake goods and services, and even includes a phone number (1-800-333-4636) that directs to the U.S. federal government contact center. See Compl., at Attached Ex. 9 (1-800-FED-INFO). Fraudulent use or competitive use cannot amount to rights or legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Accordingly, the Panel agrees that Respondent has not engaged in any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv).
Complainant argues that Respondent registered or used <morganstanleyproperties.us> in bad faith. Complainant asserts it is bringing a separate UDRP dispute against Respondent for another allegedly infringing domain name, <morganstanelyemployment.com>, which resolves to a webpage soliciting purported employees for “Morgan Stanley Properties.” See Compl., at Attached Ex. 11. Imputed is a Policy ¶ 4(b)(ii) argument. Panels consider the facts surrounding each alleged pattern of domain registrations, and have traditionally seen bad faith findings in prior UDRP decisions or registration of multiple domains in the same dispute as evidence of Policy ¶ 4(b)(ii) bad faith. See Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (Forum Oct. 9, 2013) (finding that the respondent’s negative involvement in at least three prior UDRP proceedings and the respondent’s registration of twenty-four domain names in the instant proceeding demonstrated a pattern and practice of bad faith domain name registration pursuant to Policy ¶ 4(b)(ii)). Therefore, while <morganstanelyemployment.com> has not been involved in a UDRP proceeding as of yet, and Respondent has therefore not been determined to be a cybersquatter, the Panel declines to find bad faith under Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent’s use of the domain name to offer services that compete with those of Complainant is evidence of bad faith under Policy ¶ 4(b)(iv). Competing use or otherwise fraudulent use may suggest bad faith registration or use under this prong of the Policy. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Accordingly, the Panel references Exhibits 8 and 9 for evidence of competitive/fraudulent activity and find that Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent likely had actual or constructive knowledge of Complainant when registering or using the domain name, showing nonexclusive bad faith under Policy ¶ 4(a)(iii). Complainant reasons that because the MORGAN STANLEY mark is well known and registered in many countries throughout the world, it is not illogical to make that presumption. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. For example, in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014), the panel wrote, “Although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” At present, the Panel recalls that Respondent’s website features the MORGAN STANLEY mark as a header and purports to offer services relating to Complainant’s financial offerings. See Compl., at Attached Ex. 8. Given these circumstances, the Panel infers that Respondent had actual knowledge of Complainant and its rights in the MORGAN STANLEY mark at the time Respondent registered the <morganstanleyproperties.us> domain name; therefore, the Panel finds evidence of Respondent’s bad faith registration or use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyproperties.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 22, 2017
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