Morgan Stanley v. CYBERNET SYSTECH PRIVATE LIMITED
Claim Number: FA1801001768536
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 <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2018; the Forum received payment on January 24, 2018.
On January 26, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.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 January 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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@morganstanleyexperiandirect.com, postmaster@morganstanleylogin.com, postmaster@morganstangley.com. Also on January 30, 2018, 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 February 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 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). Respondent’s <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names are confusingly similar to Complainant’s mark as Respondent appends both the “.com” generic top-level-domain (“gTLD”) as well as generic or descriptive terms such as “experiandirect” and “login” to, and removes the spacing from, intentionally misspelled versions of Complainant’s MORGAN STANLEY mark.
Respondent has no rights or legitimate interests in the morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to resolve to parked websites that contain links to third-party businesses offering financial services that compete with Complainant’s services for Respondent’s commercial gain via click-through fees. Respondent engaged in the practice of typosquatting.
Respondent registered and uses the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names in bad faith. Respondent displays a pattern of bad faith registration and use. Respondent is typosquatting. Respondent disrupts Complainant’s business via resolution to third-party links that offer services related to or that compete with Complainant’s business. Respondent creates a likelihood of confusion between Complainant and Respondent for Respondent’s commercial benefit via click-through fees. Respondent intentionally attracts, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with Respondent’s disputed domain names. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Morgan Stanley, of New York, New York, USA. Complainant is the owner of domestic and global registrations for the mark MORGAN STANLEY, and numerous related marks consisting of the family of Morgan Stanley marks. Complainant has used the MORGAN STANLEY mark continuously since at least as early as 1935, in connection with its offering of a full range of financial, investment, and wealth management goods and services. Complainant also owns thousands of domain names related to its online business portals including <morganstanley.com>.
Respondent is CYBERNET SYSTECH PRIVATE LIMITED, of Mumbai, India. Respondent’s regsitrar’s address is listed as the same. The Panel notes that Respondent registered the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names on or about December 14, 2017, December 22, 2017, and January 4, 2018, respectively.
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.”).
Complainant asserts rights in the MORGAN STANLEY mark based upon registration with the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). 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).”). The Panel here finds that Complainant has established rights in the MORGAN STANLEY mark.
Next, Complainant argues that Respondent’s <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names are confusingly similar to Complainant’s mark as Respondent appends both the “.com” gTLD as well as generic or descriptive terms such as “experiandirect” and “login” to, and removes the spacing from, intentionally misspelled versions of Complainant’s MORGAN STANLEY mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See 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); see also YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Panel here finds the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names are confusingly similar to the MORGAN STANLEY mark under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names. 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. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “CYBERNET SYSTECH PRIVATE LIMITED / CYBERNET SYSTECH PRIVATE LIMITED” as the registrant. Complainant asserts 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 alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain names prior to its registration, and Complainant has not given Respondent permission to use the disputed domain names. The Panel here finds that Respondent is not commonly known by the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Use of a disputed domain name in conjunction with a parking page and hyperlinks to third-party businesses that compete with a complainant for a respondent’s commercial gain does not represent a bona fide offer of goods and services per Policy ¶ 4(c)(i) nor a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). 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.”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant contends, and provides supporting evidence, that Respondent uses the disputed domain names to resolve to parking websites that contain links to third-party businesses offering financial services that compete with Complainant’s services for Respondent’s commercial gain via click-through fees. The Panel here finds that Respondent failed to use the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names in conjunction with a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).
Additionally, Complainant alleges Respondent engages in the practice of typosquatting. Use of an intentional misspelling of a complainant’s mark in an attempt to capitalize on the typographical errors of Internet users does not evince a finding of rights and legitimate interests pursuant to 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).”). Complainant asserts Respondent intentionally misspelled Complainant’s MORGAN STANLEY mark when registering the disputed domain names. The Panel here finds Respondent’s typosquatting is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant asserts Respondent displays a pattern of bad faith registration and use. A complainant may use serial cybersquatting to substantiate an argument of bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant asserts Complainant recently received a decision in favor of Complainant for the transfer of a disputed domain name from the same Respondent in which the Forum found said Respondent registered and used other domain names confusingly similar to Complainant’s MORGAN STANLEY mark in bad faith. See Morgan Stanley v. CYBERNET SYSTECH PRIVATE LIMITED, FA1760443 (Forum Dec. 29, 2017). The Panel here finds that the prior decision against Respondent, and Respondent’s failure to contest any of Complainant’s assertions in the instant proceeding, support a finding that Respondent registered the disputed domain names in bad faith by engaging in cybersquatting.
Next, Complainant claims that Respondent registered and uses the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names in bad faith because the resolving webpage displays links to Complainant’s competitors. Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii). 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).”). Complainant alleges Respondent disrupts Complainant’s business via resolution to third-party links that offer services related to or that compete with Complainant’s business. The Panel here finds that Respondent’s competitive disruption of Complainant’s business indicates bad faith use and registration by Respondent according to Policy ¶ 4(b)(iii).
Complainant alleges Respondent creates a likelihood of confusion between Complainant and Respondent for Respondent’s commercial benefit via click-through fees. Commercially benefiting via intentional confusion can evince bad faith registration and use. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides screenshot evidence that Complainant alleges shows Respondent is hosting of hyperlinks to competitors of Complainant for Respondent’s presumed financial gain. The Panel here finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant contends Respondent is typosquatting. Registration of a disputed domain name with an intentional misspelling of a complainant’s mark can evince a finding of bad faith per Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“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.”). Complainant asserts that, due to Respondent’s use of a common misspelling of Complainant’s MORGAN STANLEY mark, Respondent intentionally and improperly targets Internet users who commit typographical errors. The Panel here finds that Respondent’s typosquatting is indicative of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyexperiandirect.com>, <morganstanleylogin.com>, and <morganstangley.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 5, 2018
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