Morgan Stanley v. Left Right
Claim Number: FA1801001769177
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Left Right (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is morganstaṇley.com [xn--morganstaley-x54f.com], registered with Amazon Registrar, Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on January 26, 2018; the Forum received payment on January 26, 2018.
On January 30, 2018, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <xn--morganstaley-x54f.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 February 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@xn--morganstaley-x54f.com. Also on February 1, 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 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 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, Complainant offers global access to financial markets and advice. Complainant has rights in the MORGAN STANLEY mark through its registration with various worldwide trademark agencies, which includes the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). Respondent’s <morganstaṇley.com> [xn--morganstaley-x54f.com] domain name (the “Domain Name”) is confusingly similar to Complainant’s MORGAN STANLEY mark as it misspells the mark, eliminates spaces, and adds a generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Neither the MORGAN STANLEY mark nor the Domain Name is part of Respondent’s name as shown on the WHOIS record, and Respondent is thus not commonly known by that name. Further, Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register the MORGAN STANLEY mark or the Domain Name. Respondent is not using the Domain Name in connection with any bona fide offering of goods and services or for any legitimate or fair use, as it resolves to an inactive website. Further, Respondent engages in typosquatting to attract users, and Respondent’s actions clearly show that Respondent knew of Complainant’s rights in the mark prior to registering the domain name. Both of these factors are evidence of no rights or legitimate interests in the Domain Name.
Respondent registered and uses the Domain Name in bad faith. By causing initial interest confusion, Respondent’s use and registration of the Domain Name disrupts the business of Complainant. Further, Respondent engaged in typosquatting by using an intentional misspelling of Complainant’s MORGAN STANLEY mark. Additionally, Respondent fails to make an active use of the Domain Name. Finally, there can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks, and Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time he or she registered the confusingly similar domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Internationalized Domain Name/Characters
The Domain Name is an internationalized domain name (IDN). Since the “ṇ” in the “stanley” label within the Domain Name is a non-ANSII character, the ToASCII program applies the Nameprep algorithm, transcribing the result to ASCII using Punycode and prepending the three-character string “xn—.“ Thus, as seen in the WHOIS information of record, the Domain Name appears as <xn—morganstaly-x54f.com>. Panels have routinely treated Punycode transcriptions of domain names as interchangeable with their IDN counterparts. Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding <bıng.com> [xn--bng-jua.com] confusingly similar to BING and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”), and NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (FORUM May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”). In accordance with this practice, the Panel determines that analyzing the IDN <morganstaṇley.com> rather than its Punycode equivalent <xn—morganstaley-x54f.com> is proper.
Merits of the Case
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 will 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 has established its rights to the MORGAN STANLEY mark through registrations with the USPTO (e.g., Reg. No. 1,707,196 registered August 11, 1992). See, Complaint Exhibit 6. Registration of a mark with the USPTO is sufficient to demonstrate rights to a mark for the purposes of Policy ¶ 4(a)(i). BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Further, Respondent’s Domain Name is confusingly similar to the MORGAN STANLEY mark because it consists entirely of that mark, merely substituting the internationalized letter “ṇ” for the letter “n” in the “stanley” label, eliminates a space, and adds the gTLD “.com.” Such changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the MORGAN STANLEY mark, in which Complainant has demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not authorized Respondent to use its MORGAN STANLEY mark, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the resolving web site is inactive and such use does not qualify as a bona fide offering of goods and services or a legitimate noncommercial or fair use of a domain name. These allegations are supported by competent evidence. The WHOIS identifies “Left Right” as the registrant of the Domain Name. See, Complaint Exhibit 7. In the absence of facts indicating otherwise, this is reliable evidence that Respondent is not known by the Domain Name. 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). Complainant states that it has never authorized Respondent to use its MORGAN STANLEY mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Name resolves to a web site which contains the message, “This site can’t be reached.” See, Complaint Exhibit 8. Failure to make active use of a confusingly similar domain name cannot and does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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)”). Respondent is not currently using the Domain Name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
Respondent’s bad faith registration and use of the Domain Name is demonstrated by a number of factors. First, because the Domain Name is almost identical to Complainant’s mark, it causes initial interest confusion, which in turn disrupts Complainant’s business. Using a domain name that disrupts a complainant’s business through initial interest confusion is evidence of bad faith under Policy ¶¶ 4(b)(iii) & (iv). PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel finds that Respondent’s Domain Name disrupts Complainant’s business by causing initial interest confusion, in bad faith within the meaning of Policy ¶¶ 4(b)(iii) & (iv).
Secondly, as demonstrated above in connection with the rights and legitimate interests analysis, Respondent does not use the Domain Name for any purpose whatever. Registering and holding a confusingly similar domain name for an inactive web site is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s MORGAN STANLEY mark at the time of registering the Domain Name. The Panel declines to find bad faith registration based upon any notion of constructive notice, as UDRP panels have consistently held that constructive notice is not sufficient to prove knowledge of a mark at the time of registration. 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 does find, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the Domain Name. Complainant’s mark is famous, being known throughout the world for the financial services it offers. That mark is neither generic nor descriptive, and the Domain Name is virtually identical to it. The fact that Respondent incorporated Complainant’s mark so clearly into its Domain Name is compelling evidence that it knew of Complainant’s mark when it registered the Domain Name. Indeed, it is evident that Respondent registered it precisely because it does contain Complainant’s mark and would likely attract Internet traffic to Respondent’s site. Registering a confusingly similar domain name with actual knowledge of a complainant's mark is evidence of bad faith for the purposes of Policy ¶ 4(a)(iii). 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). Respondent’s actual knowledge of the MORGAN STANLEY mark at the time it registered the Domain Name demonstrates bad faith registration for the purposes of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstaṇley.com> [<xn--morganstaley-x54f.com>] Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: February 28, 2018
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