Morgan Stanley v. Freek Emming
Claim Number: FA1808001802567
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Freek Emming (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanley.amsterdam> and <morganstanley.frl>, registered with Key-Systems, LLC.
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 August 21, 2018; the Forum received payment on August 21, 2018.
On August 24, 2018, Key-Systems, LLC confirmed by e-mail to the Forum that the <morganstanley.amsterdam> and <morganstanley.frl> domain names (the “Domain Names”) are registered with Key-Systems, LLC and that Respondent is the current registrant of the names. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, LLC 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 August 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 13, 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.amsterdam, and postmaster@morganstanley.frl. Also on August 24, 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 September 18, 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 Names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The available evidence indicates that both of the Domain Names are registered by the same person or entity. The information provided to The Forum by the registrar of the Domain Names confirms that both are registered to “freek emming,” and lists the same registrant address for both Domain Names. The Doman Names were registered the same day, July 22, 2018, and the web sites resolving from both of them are identical. On this evidence the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.
A. Complainant
Complainant offers a full range of financial, investment, and wealth management services to a broad spectrum of clients. Complainant registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196) on August 11, 1992. Respondent’s Domain Names are confusingly similar to Complainant’s mark because each wholly incorporates Complainant’s MORGAN STANLEY mark and are differentiated only by eliminating the space between the two words comprising the mark and adding the “.frl” and “.amsterdam” generic top-level domain names (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names. Respondent is not authorized to use Complainant’s MORGAN STANLEY mark and is not commonly known by either Domain Name. Additionally, Respondent fails to use the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the Domain Names resolve to identical holding web sites, which additionally offer both Domain Names for sale. Further, Complainant’s mark is so famous that it is evident that Respondent registered the Domain Names to take advantage of and intentionally trade on the goodwill associated with Complainant’s mark.
Respondent registered and uses the Domain Names in bad faith. Respondent had actual knowledge of Complainant and its rights when it registered the Domain Names. It registered them only to take advantage of the goodwill and brand recognition associated with Complainant’s mark. Respondent is making no active use of either Domain Name and indeed offers them for sale. Further, by registering the Domain Names and many other domain names incorporating the marks of other famous businesses, Respondent engages in a pattern of cybersquatting.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as follows with respect to the matters at issue herein.
Complainant registered the MORGAN STANLEY mark with the USPTO. (Reg. No. 1,707,196) on August 11, 1992. See, Complaint Ex. 6. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s Domain Names are confusingly similar to Complainant’s mark because they wholly incorporate the MORGAN STANLEY mark, altering it only by omitting the space between the two words comprising it and adding a gTLD. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”), 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.”).
For the reasons discussed above, the Panel finds that the Domain Names are confusingly similar to the MORGAN STANLEY mark, in which Complainant has substantial and 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 interests. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not commonly known by the Domain Names, (ii) it is not affiliated with or authorized by Complainant to use Complainant’s marks in any way, and (iii) it is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using the Domain Names resolve to holding web sites which offer the Domain Names for sale does not demonstrate rights or legitimate interests. These allegations are supported by competent evidence.
According to the WHOIS report submitted as Exhibit 7 to the Complaint, the registrant of both Domain Names is “freek emming.” This name bears no resemblance to either of the Domain Names. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never licensed or authorized Respondent to use its MORGAN STANLEY mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Exhibit 8 contains screenshots of the web sites resolving from the Domain Names. They are identical. They feature the title “Domain Names for Sale” and list several pages of domain names, including those at issue here. The domain names listed on the web sites incorporate the names of well-known businesses, such as Amstel, BASF, Boeing, Costco, Fedex, Nestle, Disney, Ferrari, Verizon, Walgreens and many others. As with the Domain Names at issue here, the domain names listed include the gTLDs “.amsterdam” and “.frl” as well as others. Each site lists approximately 285 domains for sale. UDRP panels have held that domain investing in and of itself does not violate the Policy, provided that the domain names consist of genuinely generic terms, or common dictionary terms. Domain investing businesses that meet these requirements have been found to qualify as bona fide offerings of goods and services. X6D Limited v. Telepathy, Inc. WIPO Case No. D2010-1519, Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403. Incorp Services, Inc. v. RareNames, webReg, FA 559911, (Forum Nov. 19, 2005), General Machine Products Company, Inc., v. Prime Domains ) a/k/a Telepathy, Inc. FA 92531 (Forum Mar. 16, 2000). As described above, however, the domains listed for sale on Respondent’s web sites consist of anything but common, generic dictionary terms—they all consist of the names of famous, well recognized firms. Respondent’s obvious intent is to trade on the fame and goodwill of Complainant and many other legitimate businesses as well, and this does not confer rights or legitimate interests upon Respondent. Drexel University v. David Brouda, D2001-0067 (WIPO March 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant.”). Respondent’s use of the Domain Names to offer these and the other domain names listed for sale on its web sites cannot under any circumstances be deemed using them in connection with a bona fide offering of goods and services. Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
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.
(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.
The evidence of Respondent’s use of the Domain Names set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration. As argued by Complainant, given the world-wide notoriety of Complainant and its mark, the length of time it has been in business, and the fact that the Domain Names incorporate Complainant’s mark verbatim, it is obvious that Respondent had actual knowledge of Complainant and its MORGAN STANLEY mark when it registered the Domain Names on July 22, 2018. (See, Complaint Exhibit 7 for date of registration.) The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of 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).
Complainant argues that Respondent fails to make an active use of the Domain Names. The Panel does not view Respondent’s conduct as failing to make an active use of the Domain Names. Instead, it appears that Respondent is actively using them to attract Internet users to its web sites for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. Because of the confusing similarity in the names, Internet users seeking Complainant could easily believe that the Domain Names are associated with Complainant. Indeed, it is evident that Respondent registered the names precisely because they do contain Complainant’s mark and would likely attract Internet traffic to its sites. The opportunity for commercial gain is obvious, in that Respondent would profit from the sale of any of the domains listed on the resolving web sites. These are precisely the circumstances articulated by Policy ¶ 4(b)(iii) and they demonstrate compelling evidence of bad faith registration and use.
Moreover, given that the sole business purpose of Respondent’s web sites is to sell the listed domains, although no asking price is specified for any of them it is evident that Respondent is offering them for the highest price the market will bear, without regard to its out-of-pocket costs directly related to them. Respondent’s conduct in this regard puts Respondent squarely within the circumstances articulated by ¶ 4(b)(i). Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning 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 <morganstanley.amsterdam> and <morganstanley.frl> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 20, 2018
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