Morgan Stanley v. Reed Brown / Medbillit
Claim Number: FA1811001815944
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Reed Brown / Medbillit (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue <morganstanleyassetmanagement.net>, registered with Tucows Domains Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2018; the Forum received payment on November 12, 2018.
On November 12, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <morganstanleyassetmanagement.net> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@morganstanleyassetmanagement.net. Also on November 12, 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.
A timely Response was received and determined to be complete on November 15, 2018.
On November 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
· It is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world.
· It has used marks containing or comprising MORGAN STANLEY in connection with various financial and related services since at least as early as 1935, and the marks remain in wide-spread use today worldwide.
· It is the owner of the domain name MORGANSTANLEY.COM, as well as thousands of variations thereof across a broad spectrum of gTLDs and ccTLDs. Complainant first registered MORGANSTANLEY.COM in 1996.
· As a result of extensive use, promotion, and advertisement, the MORGAN STANLEY marks are well-known to consumers and famous, which has been recognized by a number of panels of the Forum. See, e.g., Morgan Stanley v. jorge Stephan, FA 1219168 (Forum Sept. 12, 2008); Morgan Stanley v. Meow, FA 671304 (Forum May 22, 2006); Morgan Stanley v. Albert Jackson, FA 244092 (Forum Apr. 19, 2004). And at least one prior DRS expert has held: “The evidence that has been presented by the Complainant establishes that its ‘Morgan Stanley’ trade mark has become very well-known on an international basis, having been used extensively and continuously since 1935.” Morgan Stanley v. Morgan Stanley Latin America, LLC, DRS 3070 (Nominet Dec. 15.)
· The disputed domain name, which incorporates Complainant’s MORGAN STANLEY mark in whole, must be deemed virtually identical or confusingly similar to Complainant’s registered MORGAN STANLEY marks.
· Neither the addition of the generic or descriptive term “asset management” to the disputed domain name nor the addition of the generic TLD .net and elimination of spaces do something to distinguish Respondent’s domain name from Complainant’s mark.
· Upon information and belief, neither MORGAN STANLEY nor the disputed domain name is part of Respondent’s name.
· Additionally, upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Respondent was not commonly known by those names.
· Moreover, Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY mark or the disputed domain name. Indeed, Respondent has no relationship whatsoever with Complainant.
· Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use.
· The disputed domain name resolves to a website impersonating Complainant, including by using the name “Morgan Stanley,” using Complainant’s logo, providing factual information about Complainant, using photos of Complainant’s employees and copying other text from Complainant’s website and marketing materials, that is likely to mislead consumers into mistakenly believing that the disputed domain name is authorized, operated or owned by Complainant.
· Such use of the disputed domain name also causes “initial interest confusion,” which is disruptive to Complainant, its business, and goodwill in the MORGAN STANLEY marks. This also is not a legitimate use of a domain name or bona fide offering of goods and services. Lastly, Respondent does not have any legitimate rights in the disputed domain name given the prior use and registration of Complainant’s MORGAN STANLEY marks by Complainant and its affiliates and predecessors-in-interest in numerous countries throughout the world. Complainant’s prior use and registration of such marks give Respondent actual, or at a minimum constructive, knowledge of such use and registration. See Morgan Stanley v. Chan, FA 244123 (Forum Apr. 23, 2004) (respondents likely had knowledge of complainant’s MORGAN STANLEY marks prior to registration of domain name due to complainant’s “long-standing use and fame” of marks, and fact that marks were registered with USPTO provided constructive notice to respondent of complainant’s rights in MORGAN STANLEY marks).
· It is clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant has a long and well-established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he or she chose and registered the disputed domain name, and in fact chose the domain name because it is confusingly similar to Complainant’s well-known marks and Respondent intended to capitalize on that confusion by attracting users to his or
· Upon information and belief, neither MORGAN STANLEY nor the disputed domain name is part of Respondent’s name. Additionally, upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Respondent was not commonly known by those names
· By causing initial interest confusion, Respondent’s use and registration of the disputed domain name disrupts the business of Complainant, which is additional evidence of bad faith use and registration.
· Respondent’s use of a privacy service also supports an inference of bad faith. There simply is no reason why a purported legitimate business would need to mask its true identity from the world. One can only assume from these circumstances that Respondent’s sole purpose in using a proxy for registration was to frustrate the purposes of the Policy.
· Finally, because Complainant’s marks are well known and registered in many countries throughout the world, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time he or she registered the confusingly similar domain name. This knowledge indicates Respondent’s bad faith use and registration.
B. Respondent
By the Response, the Respondent announced that it has discontinued this domain 100% and did not intend any malicious intent. Respondent has also indicated that the disputed domain name was going to be for someone that was going to work for Morgan Stanley.
The 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 truly global access to financial markets and advice. Complainant is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world. The Respondent registered on November 9, 2018 the disputed domain and used it to resolve to a website impersonating Complainant, including by using the name “Morgan Stanley,” using Complainant’s logo, providing factual information about Complainant, using photos of Complainant’s employees and copying other text from Complainant’s website and marketing materials.
Following the opening of the UDRP procedure, the Respondent by the Response announced the discontinuance of the disputed domain name. The Panel considers the discontinuance of disputed domain name by the Respondent after UDRP proceedings have started and the Respondent had been given notice about the Complaint, does not impede the Panel to proceed with the analysis of the UDRP elements and to find that the registration and use of the disputed domain name had been made in the breach of the Complainant s rights.
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.
Complainant claims rights in the MORGAN STANLEY mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1.707,196, registered Aug. 11, 1992). The Panel holds that Complainant’s registration of the MORGAN STANLEY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <morganstanleyassetmanagement.net> domain name is confusingly similar to the MORGAN STANELY mark, as the name incorporates the mark in its entirety while adding the generic/descriptive term “asset management” and a “.net” gTLD. Adding a generic or a descriptive term and a gTLD to a complainant’s mark may be an insufficient change in a Policy ¶ 4(a)(i) analysis. See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH 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)).
Respondent makes no specific contentions with regards to Policy ¶ 4(a)(i).
Consequently, the Panel determines that the <morganstanleyassetmanagement.net> domain name is confusingly similar to the MORGAN STANLEY mark per Policy ¶ 4(a)(i) and the Complainant has proven the first element of the Policy
According to the UDRP practice, the 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.
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 argues that Respondent has no rights or legitimate interests in the <morganstanleyassetmanagement.net> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MORGAN STANLEY mark in any way. WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. The WHOIS information of record identifies the registrant of the at-issue domain name as “Reed Brown / Medbillit,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <morganstanleyassetmanagement.net> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <morganstanleyassetmanagement.net> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain name to impersonate Complainant and creating initial interest confusion. Use of a disputed domain name to pass off as a complainant may not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use under a Policy ¶¶ 4(c)(i) or (iii) analysis. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving website which features a facsimile of the MORGAN STANLEY mark in connection with photographs from Complainant’s website. Therefore, the Panel finds that Respondent’s attempts to pass off as Complainant does not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Respondent makes no express contentions with regards to Policy ¶ 4(a)(ii).
Consequently, the Panel finds that the Complainant has also proven the second element under Policy ¶ 4(a)(ii).
Complainant claims Respondent’s use of the <morganstanleyassetmanagement.net> domain name to pass off as Complainant demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to disrupt the complainant’s business and/or commercially benefit is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Complainant alleges that Respondent is using the disputed domain name to divert Internet users to Respondent’s website, which features content that is identical to Complainant’s own website. The Panel finds that Respondent is disrupting Complainant’s business and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel finds Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Furthermore, Complainant also contends that in light of the fame and notoriety of Complainant's MORGAN STANLEY mark, it is inconceivable that Respondent could have registered the <morganstanleyassetmanagement.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark.
Although the Respondent makes no express contentions with regards to Policy ¶ 4(a)(iii)., the Response of the Respondent in these proceedings indicated clearly that the Respondent had had prior knowledge about the Complainant before registering the disputed domain name. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge, could in connection with other all circumstances of the case amount to bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Consequently, the Panel finds that the Complainant has also proven the second element under 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 <morganstanleyassetmanagement.net> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka
Panelist
Dated: November 30, 2018
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