Morgan Stanley v. Domains By Proxy, LLC
Claim Number: FA1708001746860
Complainant: Morgan Stanley of New York, New York, United States of America.
Complainant Representative: Cowan, Liebowitz & Latman, P.C. of New York, New York, United States of America.
Respondent: Domains By Proxy, LLC of Scottsdale, Arizona, US.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Afilias Limited
Registrars: GoDaddy.com, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Richard W. Hill, as Examiner.
Complainant submitted: August 30, 2017
Commencement: August 31, 2017
Default Date: September 15, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant
Complainant states that, with over 1,000 offices in over 40 countries, and over 55,000 employees worldwide, it offers a full range of financial, investment and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant is the owner of numerous marks containing or comprising MORGAN STANLEY, which marks Complainant consistently and continuously has used since at least as early as 1935. As a result of extensive use and promotion, the MORGAN STANLEY marks are some of the most famous marks in the financial world. Complainant owns registrations of the MORGAN STANLEY marks worldwide, including USPTO Reg. Nos. 1,707,196 and 4,470,389, which prove Complainant’s prior rights.
According to Complainant, Respondent’s domain name incorporates Complainant’s MORGAN STANLEY mark in full. The omission of the space and addition of the gTLD “.green” does not distinguish Respondent’s domain name from Complainant’s mark.
Complainant alleges that (1) neither MORGAN STANLEY nor the disputed domain name are part of Respondent’s name; (2) Respondent does not actually engage in any legitimate business or commerce under the name MORGAN STANLEY or the disputed domain name; and (3) Respondent is not commonly known by either of those names. Respondent is not a licensee of Complainant, nor has Complainant authorized Respondent to register or use the MORGAN STANLEY marks or the disputed domain name. Respondent’s domain name does not resolve to an active website. Respondent is passively holding the domain name, which is not a legitimate or bona fide use. Complainant’s MORGAN STANLEY marks are so well known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. That is not a legitimate or bona fide use of a domain name.
Further, says Complainant, there can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered its domain name, and in fact chose the domain name because it was confusingly similar to Complainant’s famous marks and intended to capitalize on that confusion to attract Internet users to its forthcoming webpage. This alone constitutes evidence of bad faith. Respondent’s failure to make active use of the disputed domain name is further evidence of bad faith. Complainant’s MORGAN STANLEY mark has been registered with the Trademark Clearinghouse since long before Respondent registered the disputed domain name. Thus, Respondent received notice of Complainant’s prior rights in the MORGAN STANLEY mark when seeking register the disputed domain name, yet proceeded with such registration in spite of that knowledge. This is further evidence of bad faith.
Registrant
Registrant did not submit a Response. In an e-mail to the Forum Registrant states (sic): “This domain does not belong to any other brands but only belong to the register as there are also many other brand as the same as morganstanley registered by other companies. Morganstanley is not the only brand belong to someone company and it also belong to many other companies in different countries. I guess the cll firm in NY should check the brand in different countries around the world and then make the decision whether their own brand is exclusive. However, we already knew that it is not the exclusive in the world. What is more, domain here in Chinese means the name of the area in virtual world which is totally different from the meaning in English. We are Chinese ppl, and we guess you should understand Chinese meaning and culture nowadays and then you will know the meaning in Chinese are totally different from your meaning in English.”
URS Procedure 1.2.6 requires Complainant to prove, by clear and convincing evidence, each of the three elements listed below to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
The registered domain name(s) is/are identical or confusingly similar to a word mark
Complainant has registered the mark MORGAN STANLEY around the world, with rights dating back to 1935. The mark is famous.
The Examiner finds that the disputed domain name is identical to the mark.
Registrant has no legitimate right or interest to the domain name
Registrant is not a licensee of Complainant, nor has Complainant authorized Registrant to register or use the MORGAN STANLEY marks or the disputed domain name. Neither MORGAN STANLEY nor the disputed domain name are part of Registrant’s name; Registrant is not commonly known by either of those names. The disputed domain name is not being used.
Thus the Examiner finds that Registrant has no right or interest to the disputed domain names.
The domain name(s) was/were registered and is being used in bad faith
The disputed domain names is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, the Examiner finds that Registrant was aware of Complainant’s trademark. The trademark is famous. It is difficult to envisage any use of the disputed domain name that would not infringe Complainant’s rights, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
Further, Registrant used a privacy service, thus concealing its identity, and its e-mail failed to address key allegations made by Complainant.
Given these circumstances, the Examiner finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Examiner finds that the disputed domain name was registered and is being used in bad faith
The Examiner finds that the Complaint was not brought in an abuse of this proceeding and that it did not contain material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
1. <morganstanley.green >
Richard W. Hill, Examiner
Dated: September 22, 2017
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