Morgan Stanley v. Harish Sreenivasa Shetty
Claim Number: FA1704001727690
Complainant is Morgan Stanley ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Harish Sreenivasa Shetty ("Respondent"), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleypay.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 known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2017; the Forum received payment on April 18, 2017.
On April 19, 2017, GoDaddy.com, LLC confirmed by email to the Forum that the <morganstanleypay.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 April 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@morganstanleypay.com. Also on April 20, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on April 20, 2017.
On April 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global financial, investment, and wealth management services company. Complainant has more than 1,000 offices in over 40 countries, including the United States and Australia. Complainant has used MORGAN STANLEY and related marks in connection with this business since at least as early as 1935. Complainant's MORGAN STANLEY mark is registered in countries around the world, including the United States. Complainant asserts that its mark is famous and has become well known to consumers globally as a result of its extensive use and promotion.
Respondent registered the disputed domain name <morganstanleypay.com> in April 2017. Complainant contends that the disputed domain name is confusingly similar to Complainant's MORGAN STANLEY mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and has been used in bad faith. In support thereof, Complainant states that Respondent is not known as MORGAN STANLEY, is not a licensee of Complainant, and has never been authorized by Complainant to use its mark. Complainant states that the disputed domain name does not resolve to an active website, and that Respondent has offered to sell the domain name to Complainant.
B. Respondent
Respondent states as follows, in relevant part:
Being a company with operating income 36 billion USD and doesn't want to mere 13 dollars for a domain name with its name so effectively know to everyone. If someone wants protect their domain names then they need to buy and keep it for themselves or let others use it to provide particular service.
We are world with more the 180 countries if someone doesn't want to buy the related domain name, then it should allow others to use it. Last but not the least they should reward the people who is able to showcase the loopholes or the mistake that they have done in not registering a domain name related to its services.
Trademark allows someone to operate their business in accordance with services provided but it will not guarantee them the domain name and the online business to operate.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.
The disputed domain name <morganstanleypay.com> corresponds to Complainant's registered MORGAN STANLEY mark, omitting the space and adding the generic term "pay" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Wells Fargo & Co. v. Russell Palermo / TekTango LLC, FA 1607932 (Forum Apr. 19, 2015) (finding <wellsfargopay.com> confusingly similar to WELLS FARGO); Capital One Financial Corp. v. Russ Palermo, FA 1602632 (Forum Mar. 13, 2015) (finding <capitalonepay.com> confusingly similar to CAPITAL ONE); Morgan Stanley v. Sergey Sokolov / n/a, FA 1531282 (Forum Jan. 7, 2014) (finding <morganstanleymortgage.com> confusingly similar to MORGAN STANLEY). Accordingly, the Panel considers the domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainant's well-known and distinctive mark with a generic term related to Complainant's industry. Respondent has not been authorized to use Complainant's mark, and has not made any active use of the disputed domain name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name."
The disputed domain name incorporates Complainant's well-known mark. Respondent has not made any active use of the domain name, and has indicated a desire to sell the domain name to Complainant, presumably for a price in excess of Respondent's out-of-pocket costs. Under the circumstances, the Panel concludes that the domain name was registered and is being used in bad faith based upon paragraph 4(b)(i) of the Policy.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleypay.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 3, 2017
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