Morgan Stanley v. Greg Ricks
Claim Number: FA1702001716330
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Greg Ricks (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyemployment.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard 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 <morganstanleyemployment.com> 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 ICANN’s Uniform Domain Name 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 message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and also to the attention of postmaster@morganstanleyemployment.com. 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 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the mark MORGAN STANLEY continuously in connection with the marketing of various financial services since at least 1935.
Complainant holds a registration for the MORGAN STANLEY service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,707,196, registered August 11, 1992).
Respondent registered the domain name <morganstanleyemployment.com> on February 5, 2017.
The domain name is confusingly similar to Complainant’s MORGAN STANLEY service mark.
Respondent has not been commonly known by the domain name.
Respondent has no relationship whatsoever with Complainant.
Complainant has not licensed or otherwise permitted Respondent to use its MORGAN STANLEY mark or to employ a domain name containing that mark.
The domain name resolves to a website for a company operating under the name “Morgan Stanley Properties” that purports to offer investment services resembling those offered by Complainant.
Respondent’s use of the domain name does not constitute either a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
Respondent employs the domain name in a phishing scheme by inviting potential customers to enter their personal information on the resolving website in conjunction with a supposed employment application for Respondent’s apparently fictitious company.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the MORGAN STANLEY mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding, under Policy ¶ 4(a)(i), that a UDRP complainant had rights in a mark through its registration of that mark with the United States Patent and Trademark Office.).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <morganstanleyemployment.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY service mark. The domain name includes the mark in its entirety, adding only the generic term “employment,” which describes an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and a gTLD to the mark of another in creating a domain name is insufficient to distinguish that domain name from the mark under Policy ¶ 4(a)(i)).
See also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015), finding, under Policy ¶ 4(a)(i), that:
Respondent’s … domain name is identical to Complainant’s … mark because it differs only by the domain name’s addition of the top-level domain name “.com.”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by the domain name <morganstanleyemployment.com>, that Respondent has no relationship with Complainant, and that Complainant has not licensed or otherwise permitted Respondent to use its MORGAN STANLEY mark or to employ a domain name containing it. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Greg Ricks,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark). To the same effect, see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so could not demonstrate that it had rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <morganstanleyemployment.com> domain name resolves to a webpage offering financial services similar to those marketed by Complainant. In the circumstances outlined in the Complaint, we may comfortably presume that Respondent seeks to profit financially from this use of the domain name. This employment of the domain name is neither a bona fide offering of goods or services or a legitimate noncommercial use by means of the domain name under Policy ¶ 4(c)(i) nor a fair use of it under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the domain name within the meaning of those provisions of the Policy. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016), finding that:
[U]se of a domain to sell products and/or services that compete directly with a [UDRP] 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).
In addition, Complainant contends that Respondent uses the challenged <morganstanleyemployment.com> domain name to operate a phishing scheme by which, under the guise of an application for employment with Respondent’s fictitious company, “Morgan Stanley Properties, it obtains personal information from Internet users seeking the services of Complainant. This too is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. See, for example, Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum November 14, 2014) (finding that a respondent failed to show that it provided a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name where the respondent used the domain name to phish for Internet users’ personal information by offering a fake job posting on a resolving website).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <morganstanleyemployment.com> domain name to purport to market financial services akin to those offered by Complainant, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Spark Networks PLC v. Houlihan, FA 653476 (Forum April 18, 2006) (finding that a respondent’s registration and use of a domain name confusingly similar to a UDRP complainant’s mark to operate a competing online dating website supported a finding under Policy ¶ 4(b)(iii) that that respondent registered and used the domain name to disrupt that complainant’s business).
We are also convinced by the evidence that Respondent uses the website resolving from the <morganstanleyemployment.com> domain name fraudulently to phish for the personal information of Internet users seeking Complainant’s services. This is a further demonstration of Respondent’s bad faith in registering and using the domain name. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015):
Respondent uses the … domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, under this head of the Policy, it is evident from the record before us that Respondent knew of Complainant and its rights in the MORGAN STANLEY mark when it registered the <morganstanleyemployment.com> domain name. This is additional confirmation of Respondent’s bad faith in registering the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that the respondent knew of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <morganstanleyemployment.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 15, 2017
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