Morgan Stanley v. Chris Rugh / Rugly LLC
Claim Number: FA1801001769458
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Chris Rugh / Rugly LLC (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.feedback>, registered with TLD Registrar Solutions Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2018; the Forum received payment on January 29, 2018.
On February 2, 2018, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <morganstanley.feedback> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@morganstanley.feedback. Also on February 2, 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 Sandra J. Franklin 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
1. Respondent’s <morganstanley.feedback> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanley.feedback> domain name.
3. Respondent registered and uses the <morganstanley.feedback> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a financial services company with over 1,000 offices in over 40 countries, and has over 55,000 employees worldwide. Complainant holds a registration for its MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196, registered Aug. 11, 1992).
Respondent registered the <morganstanley.feedback> domain name on January 14, 2016, and uses it to pass itself off as Complainant and offer third-party reviews.
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 Panel finds that Complainant has established rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. 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).”).
Respondent’s <morganstanley.feedback> domain name uses Complainant’s full mark, without the space adds the gTLD “.feedback.” These changes do not distinguish a domain name from a mark for the purposes of Policy ¶4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”). The Panel finds that Respondent’s <morganstanley.feedback> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <morganstanley.feedback> domain name, and is not commonly known by the domain name. Complainant states that Respondent is not legitimately affiliated with Complainant, and has no permission to use the MORGAN STANLEY mark. The WHOIS identifies “Chris Rugh / Rugly LLC” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <morganstanley.feedback> domain name under Policy ¶ 4(c)(ii). 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); see also 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 argues that 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 under Policy ¶¶ 4(c)(i) and (iii). Complainant claims that Respondent uses the domain name to pass itself off as Complainant and offer third-party reviews. Complainant provides a screenshot of the resolving webpage, which displays the title “Morgan Stanley review” and other links. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Bridgestone Brands, LLC v. Inc. Services, D2017-0957 (WIPO July 6, 2017) (finding “Complainant has submitted evidence that Respondent is using the Domain Name to attract visitors to a fake review website by impersonating Complainant.”). Accordingly, the Panel finds that Respondent’s use of the <morganstanley.feedback> domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant claims that Respondent registered and used the disputed domain name in bad faith by causing initial interest confusion as to the source of the content on the resolving website, disrupting Complainant’s business. The Panel agrees and finds that Respondent uses the <morganstanley.feedback> domain name in bad faith under Policy ¶ 4(b)(iii). See Bridgestone Brands, LLC v. Inc. Services, D2017-0957 (WIPO July 6, 2017) (finding “Respondent’s registration and use of the Domain Name for a fake review website impersonating Complainant constitutes bad faith under paragraph 4(b)(iii) of the Policy.”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Complainant contends that Respondent must have had actual knowledge of Complainant’s MORGAN STANLEY mark given its widespread and long-standing use in the financial service industry. The Panel agrees, noting Respondent’s specific reference to Complainant on the website resolving from the disputed domain name, and finds further bad faith under Policy ¶ 4(a)(iii). 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).
The Panel finds that Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley.feedback> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 28, 2018
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