Morgan Stanley v. CYBERNET SYSTECH PRIVATE LIMITED
Claim Number: FA1711001760443
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is CYBERNET SYSTECH PRIVATE LIMITED
(“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstaleyfa.com>, <mybenefitsmorganstanley.com>, and <morginstanleyclientserv.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2017; the Forum received payment on November 29, 2017.
On November 30, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <morganstaleyfa.com>, <mybenefitsmorganstanley.com>, and <morginstanleyclientserv.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@morganstaleyfa.com, postmaster@mybenefitsmorganstanley.com, and postmaster@morginstanleyclientserv.com. Also on December 1, 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 December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant 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. With over 1,000 offices in over 40 countries, and over 55,000 employees worldwide, including in India, Complainant offers truly global access to financial markets and advice. Complainant registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Respondent’s <morganstaleyfa.com>, <mybenefitsmorganstanley.com>, and <morginstanleyclientserv.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate Complainant’s mark, or a misspelled version of Complainant’s mark, and add generic or descriptive terms and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, each of the domain names resolve to a parked website which contain links to third-party businesses offering financial services that compete with Complainant’s services. See Compl. Ex. 8. Further, Respondent engages in typosquatting by intentionally misspelling Complainant’s mark in the domain name.
Respondent registered and uses the <morganstaleyfa.com>, <mybenefitsmorganstanley.com>, and <morginstanleyclientserv.com> domain names in bad faith. Respondent disrupts Complainant’s business as the domain names all resolve to websites that provide links to businesses that offer services related to or that compete with Complainant’s services. See Compl. Ex. 8. Thus, Respondent uses the domain names to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with Respondent’s websites. Further, the domain names consist of common misspellings of Complainant’s MORGAN STANLEY mark, and thus target users who commit these common typographical errors. Finally, Respondent had actual and constructive knowledge of the MORGAN STANLEY mark due to Complainant’s worldwide trademark registrations and Complainant’s long and well-established reputation in the mark through its exclusive use in the financial and investment services industries throughout the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that offers a full range of financial, investment, and wealth management services to a broad spectrum of clients.
2. Complainant has established its trademark rights in the MORGAN STANLEY mark by having registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992).
3. Respondent registered the domain names on the following dates: <morganstaleyfa.com> November 7, 2017, <mybenefitsmorganstanley.com> November 16, 2017, and <morginstanleyclientserv.com> November 17, 2017.
4. Each of the domain names resolve to a parked website which contains links to third-party businesses offering financial services that compete with Complainant’s services and the Respondent has engaged in typosquatting.
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.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims to have registered the MORGAN STANLEY mark with the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s mark as they incorporate the mark, or a misspelled version of the mark, and add generic or descriptive terms and the generic top-level domain (“gTLD”) “.com.” Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4 (a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Here, the <morganstaleyfa.com> domain name omits the “n” from “stanley” and adds the term “fa;” the <mybenefitsmorganstanley.com> domain name prepends the term “mybenefits” to the entire mark; and the <morginstanleyclientserv.com> domain name replaces the “a” in “morgan” with the letter “I” and appends the generic term “clientserv.” All of the domain names add the gTLD “.com.” The Panel therefore finds that the disputed domain names are confusingly similar to the MORGAN STANLEY mark under Policy ¶4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY mark and to use it in its domain names, incorporating the mark, or a misspelled version of the mark, and adding generic or descriptive terms and the generic top-level domain (“gTLD”) “.com”;
(b) Respondent registered the disputed domain names on the following dates, <morganstaleyfa.com> November 7, 2017, <mybenefitsmorganstanley.com> November 16, 2017 and <morginstanleyclientserv.com> November 17, 2017;
(c) Each of the domain names resolve to a parked website which contains links to third-party businesses offering financial services that compete with Complainant’s services and the Respondent has engaged in typosquatting;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <morganstaleyfa.com>, <mybenefitsmorganstanley.com>, and <morginstanleyclientserv.com> domain names as, where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent and to determine if Respondent was commonly known by the domain names. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS in the present case identifies “CYBERNET SYSTECH PRIVATE LIMITED” as the registrant for all of the domain names at issue. See Compl. Ex. 7. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the MORGAN STANLEY mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that each of the domain names resolves to a parked website which contain links to third-party businesses offering financial services that compete with Complainant’s services, presumably to benefit commercially from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant generally is not considered to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving webpages, all of which contain links such as “www.vusa.com/AssetManagement,” “Morgan,” and “Looking For Financial Advise? – Build A Plan With Edelman.” See Compl. Ex. 8. Accordingly, the Panel finds that Respondent’s competing hyperlinks do not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant also submits Respondent engages in typosquatting by intentionally misspelling Complainant’s mark in two of the domain names. Registering a domain name containing common typing errors in a complainant’s mark can indicate a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Here, both the <morginstanleyclientserv.com> and <morganstaleyfa.com> domain names contain misspellings of the MORGAN STANLEY mark, however they also include other terms in the domain name. As such, as the Panel finds Respondent’s domain names are typosquatted versions of Complainant’s mark, the Panel uses this as additional evidence of Respondent’s lack of rights and legitimate interests in the two relevant domain names.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the competing links on the resolving webpages for the domain names for commercial gain. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). As mentioned previously, Complainant provides screenshots of the resolving webpages, all of which contain links such as “www.vusa.com/AssetManagement,” “Stanley,” and “Looking For Financial Advise? – Build A Plan With Edelman.” See Compl. Ex. 8. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, Complainant contends that the domain names consist of common misspellings of Complainant’s MORGAN STANLEY mark, and thus target users who commit these common typographical errors. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Again, as noted above, both the <morginstanleyclientserv.com> and <morganstaleyfa.com> domain names contain misspellings of the MORGAN STANLEY mark, however they also include other terms in the domain name. As such, as the Panel finds Respondent’s domain names are typosquatted versions of Complainant’s mark, tthe Panel uses this as additional evidence of Respondent’s bad faith registration per Policy ¶ 4(a)(iii).
Thirdly, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s MORGAN STANLEY mark at the time of registering the domain names. Prior UDRP decisions have generally declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain names and finds that actual knowledge can evince bad faith under Policy ¶ 4(a)(iii) as it does in the present case. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the MORGAN STANLEY mark due to Complainant’s long and well-established reputation in the mark through its exclusive use in the financial and investment services industries throughout the world. Accordingly, the Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MORGAN STANLEY mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstaleyfa.com>, <mybenefitsmorganstanley.com>, and <morginstanleyclientserv.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: December 29, 2017
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