Morgan Stanley v. Ryan Hekmat
Claim Number: FA1708001743089
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Ryan Hekmat (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyassets.com>, registered with Google Inc.
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 August 4, 2017; the Forum received payment on August 4, 2017.
On August 4, 2017, Google Inc. confirmed by e-mail to the Forum that the <morganstanleyassets.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. 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 August 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@morganstanleyassets.com. Also on August 7, 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 31, 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 offers a full range of financial, investment and wealth management services to a broad spectrum of institutional and retail clients.
With more than 1,000 offices and 55,000 employees in more than 40 countries, Complainant’s business is worldwide in scope.
Complainant holds a registration for the MORGAN STANLEY trademark, 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 <morganstanleyassets.com> on June 23, 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 sponsored by or affiliated with Complainant in any way.
Respondent has not engaged in any business under the name MORGAN STANLEY or the disputed domain name.
Respondent is not using the disputed domain name to provide a bona fide offering of goods or services or in a legitimate noncommercial or fair use.
Rather, Respondent inactively holds the domain name in that it does not resolve to an active website.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name causes confusion among Internet users as to the possibility of Complainant’s association with the domain name.
Respondent’s use of the domain name is disruptive to Complainant’s business.
Respondent knew of Complainant and its rights in the MORGAN STANLEY mark when it registered the domain name.
Respondent registered and uses 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 by Respondent 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 mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Forum November 29, 2005) (finding that a UDRP complainant had registered its mark with national trademark authorities, a panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <morganstanleyassets.com> is confusingly similar to Complainant’s MORGAN STANLEY trademark. The domain name contains the mark in its entirety, with only the addition of the generic term “assets,” which relates to 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 Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC, FA 1246046 (Forum March 24, 2009) (finding that the addition of the generic terms “bank” and “online” to the mark of another in creating the domain MORGANSTANLEYBANKONLINE did not escape confusing similarity). See also Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding that the addition of the gTLD “.com” to the mark of a UDRP complainant is irrelevant for purposes of distinguishing a disputed domain name from a mark because every domain must contain a generic Top Level Domain).
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 they are 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 that Respondent does not deny, that Respondent has not been commonly known by the domain name <morganstanleyassets.com>, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Respondent has not engaged in any business under the name MORGAN STANLEY or the disputed domain name.
Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Ryan Hekmat,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding, under Policy ¶ 4(c)(ii), that a UDRP respondent was not commonly known by a challenged domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the disputed <morganstanleyassets.com> domain name to provide a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but, instead, Respondent inactively holds the domain name in that it does not resolve to an active website. Such inactive holding does not amount to a form of use that could confirm in Respondent rights to or legitimate interests in the domain name as provided in Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See, for example, Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum April 20, 2005):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record reflects that Respondent has held the <morganstanleyassets.com>
Domain name for more than three and a half (3 ˝) years from the time it was registered without making any active use of it. Under Policy ¶ 4(a)(iii), inactive holding of a domain name for such an extended period can be taken as evidence of a respondent’s bad faith in registering and using the domain name. See, for example, Microsoft Corporation v. Jordin Barth, FA1211001473274 (Forum January 14, 2013) (finding, under Policy ¶ 4(a)(iii), that a UDRP respondent’s failure to make active use of a disputed domain name from the time it was registered indicated that that respondent had registered and was using the domain name in bad faith).
We are also persuaded by the evidence that Respondent knew of Complainant and its rights in the MORGAN STANLEY mark when it registered the disputed <morganstanleyassets.com> domain name. This further demonstrates 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 from the evidence of record that that 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 <morganstanleyassets.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 4, 2017
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