Morgan Stanley v. kevinderek wang
Claim Number: FA1707001739881
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is kevinderek wang (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mymorganstanley.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2017; the Forum received payment on July 13, 2017.
On July 15, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <mymorganstanley.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@mymorganstanley.us. Also on July 17, 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 August 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Morgan Stanley, is a full range financial, investment, and wealth management services provider based in New York, USA. In connection with this business Complainant uses the MORGAN STANLEY mark to promote its goods and services.
Complainant has rights in the MORGAN STANLEY mark based upon registration with the United States Trademark and Patent Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992).
Respondent’s domain name, <mymorganstanley.us>, is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety (minus the space) and merely adds the letters “my”—indicating possession and frequently used by trademark owners to offer information on their products—and the country-code top-level domain (“ccTLD”) “.us.”
Respondent lacks rights and legitimate interests in <mymorganstanley.us>. Respondent has not been commonly known by the disputed domain name, nor has Respondent utilized the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the domain name does not resolve to any active website.
Respondent registered or has used the disputed domain name in bad faith. Respondent had actual or constructive knowledge of Complainant when registering or using the domain name, indicating bad faith under usTLD Policy ¶ 4(a)(iii). Inactive holding also supports such a finding, as does the failure of Respondent to reply to Complainant’s demand letter and follow-up emails.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO trademark registration for its MORGAN STANLEY mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the MORGAN STANLEY mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent holds the at-issue domain name inactively.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the MORGAN STANLEY mark with the USPTO establishes its rights in a mark under usTLD Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”).
Respondent’s <morganstanleysh.com> domain name contains Complainant’s MORGAN STANLEY mark in its entirety, less its space, prefixed by the generic term “my,” with the country code top level domain name “.us” completing the domain name. The term “my” indicates possession and is often used in conjunction with a trademark to offer customer specific information. The addition of the country code top level domain name “.us” is immaterial to usTLD Policy ¶ 4(a)(i) analysis, as is the removal of the trademark’s space. Therefore the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to usTLD Policy ¶ 4(a)(i). See YETI Coolers, LLC v. bruno Ringwald, FA 1677865 (Forum July 19, 2016) (finding <myyeti.net> confusingly similar to the YETI mark, recognizing precedent that also found confusing similarity where a respondent added the term “my” to a fully incorporated mark); see also, Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax prohibits spaces. Therefore, omitted spacing . . . must be ignored when performing a Policy ¶4(a)(i) analysis.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no usTLD Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “kevinderek wang” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of usTLD Policy ¶ 4(c)(iii). 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).
Additionally, Respondent makes no use of the at-issue domain name. The domain is inactive and fails to address a website or function in any other internet related capacity. Using the domain name in this manner suggests neither a bona fide offering of goods or services under usTLD Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use of the domain name under usTLD Policy ¶ 4(c)(iv). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The examples of bad faith registration and use set forth in paragraph 4(b) of the usTLD Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from exploiting the trademark of another. While Complainant has not made any claims nominally falling within one of the bad faith situations enumerated under Policy ¶ 4(b), the Panel may, and does, nevertheless consider bad faith found peripheral to the confines of such paragraph.
As mentioned above regarding rights and interests, Respondent holds <mymorganstanley.us> inactively. Respondent’s failure to make use of the confusingly similar domain name indicates bad faith under usTLD Policy ¶ 4(a)(iii). See Kohl's Illinois, Inc. v. c/o kphls.com; c/o kohals.com; c/o kohlsdepartmentstore.com; c/o khols.com, FA 1442950 (Forum June 7, 2012) (“Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under Policy ¶ 4(a)(iii)”).
Furthermore, the fact that Complainant’s trademark is well known and the domain name is confusingly similar to such trademark urges the conclusion that the <mymorganstanley.us> domain name was registered in bad faith because Respondent desired to inappropriately capitalize on the goodwill associated with Complainant’s trademark. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”).
Finally, Complainant’s MORGAN STANLEY mark is well-known throughout the United States and worldwide. In light of such notoriety there can be no doubt that Respondent was well aware of Complainant’s MORGAN STANLEY mark when it created and registered the confusingly similar <mymorganstanley.us> domain name. Registering a domain name with knowledge of another’s rights therein indicates bad faith under usTLD 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mymorganstanley.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 8, 2017
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