Morgan Stanley v. Tulip Trading Company
Claim Number: FA1707001740600
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstsnley.com>, registered with Key-Systems GmbH.
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 July 19, 2017; the Forum received payment on July 19, 2017.
On July 20, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <morganstsnley.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 July 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@morganstsnley.com. Also on July 21, 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 14, 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 is a global provider of financial, investment and wealth management products and services, doing business under the MORGAN STANLEY mark.
Complainant holds a registration for the MORGAN STANLEY mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,470,389, registered January 21, 2014.
Respondent registered the domain name <morganstsnley.com> on or about June 28, 2017.
The domain name is confusingly similar to Complainant’s MORGAN STANLEY trademark.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant in any way.
Complainant has not licensed or otherwise authorized Respondent to use the MORGAN STANLEY mark in any regard.
Respondent has not made a bona fide offering of goods or services by means of, or a legitimate non-commercial or fair use of, the domain name.
The domain name resolves to a website from which Respondent attempts to phish for Internet users’ personal information and to install malware on users’ Internet devices by displaying a fake error message instructing users to contact “technicians” for assistance.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has engaged in a pattern of bad faith registration and use of domain names infringing on the marks of third parties, as is evidenced by eight (8) previous UDRP decisions against it, all as spelled out in the Complaint.
The domain name is an instance of typo-squatting in that it takes advantage of a common typing error made by Internet users in order to divert such users to Respondent’s website.
Respondent registered the domain name with actual knowledge of Complainant and its rights to the MORGAN STANLEY mark.
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 trademark 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:
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 trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) .... Due to Complainant’s … USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Saint Kitts and Nevis). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <morganstsnley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY trademark. The domain name incorporates the mark in its entirety, removing only the space between its terms, misspelling the mark by replacing the letter “a” in STANLEY with the letter “s,” and adding 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 Am. Online, Inc. v. David, FA 104980 (Forum April 10, 2002):
The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.
Further see Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015):
Where respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), [the Panel may find that] confusing similarity under Policy ¶ 4(a)(i) is appropriate.
See also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum April 30, 2007), finding that neither the elimination of the spaces between the terms of the mark of another nor the addition to it of a gTLD in creating a domain name establishes distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i).
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 that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <morganstsnley.com> domain name, that Respondent is not affiliated with Complainant in any way, and
that Complainant has not licensed or otherwise authorized Respondent to use the MORGAN STANLEY mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Tulip Trading Company,” 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 ambit of Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006), finding that a UDRP respondent was not commonly known by a disputed domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name. To the same effect, see also Tercent Inc. v. Lee Yi, FA 139720 (Forum February 10, 2003).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of the <morganstsnley.com> domain name, or a legitimate non-commercial or fair use of it, in that the domain name resolves to a website from which Respondent attempts to phish for Internet users’ personal information and to install malware on their Internet devices by displaying a fake error message instructing such users to contact “technicians” for assistance. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the challenged domain name under the terms of those provisions of the Policy. See, generally, Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum April 30, 2010). And, specifically on the point of clandestinely introducing malware to the devices of unsuspecting Internet users by means of a domain name that is confusingly similar to the mark of another as falling outside the parameters of Policy ¶¶ 4(c)(i)-(iii), see Baker v. J M, FA 1259254 (Forum June 12, 2009).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Complainant in this proceeding spells out in detail eight (8) instances in which Respondent has been a party respondent in UDRP cases in each of which it was found to have registered and used in bad faith domain names that were confusingly similar to the commercial marks of various complainants. Under Policy ¶ 4(b)(ii), this demonstrated pattern of bad faith registration and use of domain names in other instances stands as evidence of Respondent’s bad faith in registering and using the challenged <morganstsnley.com> domain name in the case before us. See Webster Financial Corporation v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012). To the same effect, see also Martin H. Meyerson v. Speedy Web, FA 960409 (Forum May 25, 2007).
In addition, we are persuaded by the evidence that Respondent has employed the <morganstsnley.com> domain name to facilitate a phishing scheme by which Respondent seeks to induce Internet users to compromise their personal information. Such a scheme, without more, demonstrates Respondent’s bad faith in registering and using the domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum August 10, 2015).
Likewise, Respondent’s employment of the contested <morganstsnley.com> domain name to introduce malware to the computers and devices of Internet users is independent evidence of Respondent’s bad faith in registering and using the domain name. See, for example, Microsoft Corporation v. ABK , et al., FA1211001473573 (Forum January 21, 2013).
We are also convinced by the evidence that the <morganstsnley.com> domain name is an instance of typo-squatting, which has been defined as follows:
Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.
Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (ForumAugust 11, 2016).
Typo-squatting is itself adequate evidence of Respondent’s bad faith in registering and using the challenged domain name. Webster Financial, supra.
Finally, under this head of the Policy, it is plain from the record that Respondent registered the contested <morganstsnley.com> domain name while knowing of Complainant and its rights in the MORGAN STANLEY mark. This too is proof of Respondent’s bad faith in registering the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014), finding, under Policy ¶ 4(a)(iii), bad faith registration of a domain name in a respondent’s “actual knowledge through the name used for the domain and the use made of it.” To the same effect, see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum April 10, 2006).
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 <morganstsnley.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2017
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