Morgan Stanley v. Tulip Trading Company
Claim Number: FA1712001761735
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”), Federation of Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstayley.com>, registered with Key-Systems GmbH.
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 Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2017; the Forum received payment on December 7, 2017.
On December 11, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <morganstayley.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. 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 December 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@morganstayley.com. Also on December 11, 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 January 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that 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. With over 1,000 offices in over 40 countries, including the United States and China, and over 55,000 employees worldwide, Complainant offers truly global access to financial markets and advice. Complainant owns the mark MORGAN STANLEY with rights dating back to 1935. The mark is registered around the world. The mark is famous: MORGAN STANLEY has ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for at least the past two years, and was ranked numbers 26 and 24, respectively, in Brand Finances 2014 and 2015 Banking 500 global brands.
Complainant alleges that the disputed domain name is confusingly similar to its mark as it incorporates the MORGAN STANLEY mark in whole with a misspelling involving the letter “y” and “n” as well as the addition of the “.com” generic top-level-domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to resolve to a parking page hosting pay-per-click links to third-party businesses offering financial services that compete with Complainant and Complainant’s business. Respondent intentionally registered a typosquatted version of Complainant’s mark. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent demonstrates a pattern of bad faith as it has been a respondent is numerous domain name disputes in which panels have found bad faith registration and use of domain names containing, comprising or confusingly similar to well-known marks, including a prior dispute involving Complainant’s MORGAN STANLEY mark. Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant’s business to Respondent’s resolving website which is populated with pay-per-click hyperlinks to third-parties that compete with Complainant and Complainant’s business. Respondent uses the disputed domain name in an attempt to install malicious software on Internet users’ computers. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the disputed domain name. Respondent registered a typosquatted version of Complainant’s MORGAN STANLEY mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark MORGAN STANLEY and uses it to market financial services around the world. The mark is famous.
Complainant’s rights in its mark date back to 1935.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain resolves to a parking page hosting pay-per-click links to third-party businesses offering financial services that compete with those of Complainant.
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 disputed domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s MORGAN STANLEY mark in whole with a misspelling involving the letter “y” and “n” as well as the addition of the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that the <morganstayley.com> domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use the MORGAN STANLEY mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel notes that the WHOIS information of record identifies Respondent as “Tulip Trading Company / Tulip Trading Company.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a parked page displaying pay-per-click links to third-party businesses offering financial services that compete with Complainant and Complainant’s business. Such of a domain name does not constitute a bona fide offer or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Further, Respondent intentionally registered a misspelling of Complainant’s MORGAN STANLEY mark to typosquat. Registration of a typosquatted version of a complainant’s mark by a respondent goes to substantiate a finding that said respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Consequently, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name on this ground also.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant’s business to Respondent’s resolving website which is populated with pay-per-click hyperlinks to third-parties that compete with Complainant and Complainant’s business. Such use evinces a finding of bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel therefore finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Further, Respondent registered a typosquatted version of Complainant’s MORGAN STANLEY mark. 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).”). Accordingly, the Panel finds bad faith registration and use on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstayley.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 4, 2018
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