Morgan Stanley v. Bradley Family Partners Trust / BFP&T
Claim Number: FA1905001841934
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Bradley Family Partners Trust / BFP&T (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyblock.com>, registered with GoDaddy.com, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2019; the Forum received payment on May 7, 2019.
On May 7, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleyblock.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2019 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@morganstanleyblock.com. Also, on May 10, 2019, 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 May 29, 2019.
On June 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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 operates an American multinational investment bank and financial services company. Complainant has rights in the MORGAN STANLEY mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Respondent’s <morganstanleyblock.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because it wholly incorporates Complainant’s MORGAN STANLEY mark, and merely adds the generic or descriptive term “block” and the “.com” generic top-level domain.
Respondent lacks rights or legitimate interests in the <morganstanleyblock.com> domain name. Respondent is not a licensee of Complainant nor is Respondent authorized to use Complainant’s MORGAN STANLEY mark and is not commonly known by the disputed domain name. See Compl. Ex. 7. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the MORGAN STANLEY mark to attract Internet users by trading off the goodwill of Complainant and cause initial interest confusion. Respondent also offered to sell the disputed domain name for more than any conceivable cost of the domain name registration. See Compl. Ex. 9.
Respondent registered and uses the <morganstanleyblock.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent causes initial interest confusion. See Compl. Ex. 9. Finally, Respondent also registered and uses the disputed domain name in bad faith because Respondent had actual and/or constructive knowledge of Complainant’s MORGAN STANLEY mark prior to registering the disputed domain name.
B. Respondent
Respondent operates Bradley Partners Family & Trusts (“BPF&T”). Respondent agrees Complainant is the owner of the MORGAN STANLEY mark. Respondent’s <morganstanleyblock.com> domain name is not confusingly similar to the MORGAN STANLEY mark because it includes the generic term “block”, which is not a term associated with financial services.
Respondent has rights or legitimate interests in the <morganstanleyblock.com> domain name because Respondent is not in the financial services industry and plans to offer different goods and services for sale unrelated to the Complainant. Respondent posted a disclaimer to reduce confusion.
Respondent registered and uses the <morganstanleyblock.com> domain name in good faith because Respondent has not registered the disputed domain name with the intention of preventing Complainant from using the MORGAN STANLEY mark. Respondent offered the disputed domain name for sale to Complainant for less than actual costs, and the disputed domain name was not purchased with the intention of selling the disputed domain name to Complainant.
C. Additional Submissions
Complainant and Respondent filed additional submissions on May 31, 2019 and June 5, 2019, respectively. The additional submissions were filed in a timely manner and shall be considered according to the Forum's Supplemental Rule #7.
Complainant
Complainant refutes Respondent’s arguments that disputed domain name is not confusingly similar to Complainant’s MORGAN STANLEY marks.
Complainant states that Respondent has not submitted any valid explanation for using Complainant’s famous MORGAN STANLEY mark in the disputed domain name, especially when there is no evidence that he was known by the disputed domain name before Complainant established rights in its MORGAN STANLEY marks.
Complainant avers that Respondent admits that he intends to use the disputed domain name in connection with a commercial business for profit, but has failed to provide any justification for why he appropriated Complainant’s famous MORGAN STANLEY mark in the domain name.
Respondent
Respondent acknowledges that the Complainant has rights to the two separate common names “Morgan & Stanley”, however does not have the right to the phrase morganstanleyblock.
Respondent states that the domain name was available at GoDaddy, which operates, as far as understood, under ICANN.
Respondent explains that its business does not interfere in finance, money or the Complainant’s business and as a result cannot be confused with Complainant’s.
Respondent affirms that its use of the disputed domain name demonstrates a legitimate and fair use of the same but, that information regarding the business development plan is confidential and cannot be disclosed.
Respondent avers that it offered the Complainant the opportunity to have a meeting to explain its business development, including use of the disputed domain name.
Respondent adds that it did not do anything in bad faith.
Respondent ends by saying that he is free to set the price for sale of the domain name and that exercise of this prerogative is not contrary to any commercial principle.
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.
Identical and/or Confusingly Similar : Policy ¶ 4(a)(i).
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). See Compl. Ex. 6. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”)
Respondent acknowledges that the Complainant has rights to the two separate common names “Morgan & Stanley”, however does not have the right to the phrase morganstanleyblock.
The Panel finds Complainant has rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <morganstanleyblock.com> is confusingly similar to Complainant’s mark as it wholly incorporates the MORGAN STANLEY mark and merely adds the generic or descriptive term “block” and the “.com” gTLD.
Respondent contends that the <morganstanleyblock.com> domain name is not confusingly similar as it adds the generic term “block” which is unrelated to Complainant’s business.
Additional terms and changes to a mark may distinguish a disputed domain name from a Complainant’s mark. However, the addition of generic or descriptive terms and a gTLD to a complainant’s mark has been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See 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 The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Considering the record, the Panel agrees with Complainant and finds Respondent’s disputed domain name to be confusingly similar to the Complainant’s MORGAN STANLEY mark.
Alternatively, Respondent contends that the disputed domain name is comprised entirely of common and generic terms and thus cannot be deemed identical or confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶¶ 4(a)(ii) and (iii).
Rights or Legitimate Interests : Policy ¶ 4(a)(ii).
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 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 argues that Respondent has no rights or legitimate interests in the <morganstanleyblock.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the MORGAN STANLEY mark.
WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant provides WHOIS information for Respondent indicating Respondent is known as “Bradley Family Partners Trust/BFP&T” and no information in the record indicates that Respondent was authorized to use the Complainant’s MORGAN STANLEY mark. See Compl. Ex. 7.
Respondent has not complied with requests to transfer the disputed domain name. See Compl. Ex. 9.
The Panel finds that based on the record, Respondent is not known by the domain name, nor was Respondent authorized to use Complainant’s MORGAN STANLEY mark.
Next, Complainant contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services, or for a legitimate noncommercial, or fair use because Respondent uses the MORGAN STANLEY mark in the domain name to attract Internet users to Respondent’s unaffiliated website for Respondent’s own business.
Respondent affirms that its use of the disputed domain name demonstrates a legitimate and fair use of the same, however, that information regarding the business development plan is confidential and cannot be disclosed. As a result, there is no evidence in the record to support Respondent’s affirmations.
Use of a disputed domain name to divert Internet users to a respondent’s website to cause confusion as to affiliation is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Here, Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays content for Respondent’s purported business. See Compl. Ex. 9.
In light of the lack of evidence to support and evaluate Respondent’s affirmations, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Additionally, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as Respondent offered to sell the disputed domain name for more than any conceivable cost of the domain name registration. Complainant provides email correspondence with Respondent in which Respondent offers to sell the disputed domain name for $11,000.00. See Compl. Ex. 9.
Respondent contends that setting the sale price for the domain name is a commercial prerogative and in accord with commercial practices. Additionally, Respondent itself admits that his “business's and ideas do not Rely or need solely any one name…” See Compl. Ex. 9.
An offer to sell a domain name in excess of out-of-pocket costs may demonstrate a lack of rights or legitimate interest in a disputed domain name. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). However, when coupled with the fact that the Respondent is not known by the domain name, nor has otherwise demonstrated a connection to the domain name, the Panel concludes that the offer of sale of the domain name in excess of out-of-pocket costs is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, rather demonstrates a lack of rights and legitimate interests in the disputed domain name.
Respondent argues that it has rights or legitimate interests in the <morganstanleyblock.com> domain name because it makes a bona fide offering of goods or services in a sector unrelated to the financial services industry and plans to offer different goods and services for sale unrelated to the Complainant.
A respondent may prove that an offering of goods or services is bona fide and thus indicative of rights and legitimate interests through supporting evidence that proves a Respondent connects customers with those goods or services. However, the record does not contain any evidence in support Respondent’s offering of bona fide goods and services.
Respondent also argues that the terms of the <morganstanleyblock.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. On the other hand, Respondent agrees that Complainant has rights in the MORGAN STANLEY mark, so the disputed domain name does not solely consist of generic terms. See Resp. Add’l Submissions.
Therefore, the Panel disagrees with Respondent and finds that the disputed domain name is not common and generic.
As mentioned above, Respondent itself admits that his “business and ideas do not Rely or need solely any one name…” See Compl. Ex. 9.
The Panel holds that Complainant has established a prima facie case in support of its arguments that Respondent has failed to carry the burden that it has rights and legitimate interests under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith : Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <morganstanleyblock.com> domain name in bad faith because Respondent offered to sell the disputed domain name well in excess of out-of-pocket costs. An offer to sell a disputed domain name in excess of out-of-pocket costs may evince bad faith under Policy ¶ 4(b)(i). See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”).
Complainant provides email correspondence with Respondent in which Respondent offers to sell the disputed domain name for $11,000.00. See Compl. Ex. 9. Therefore, under circumstances where the Respondent is not known by the domain name, nor has provided any evidence of a business plan which incorporates a legitimate commercial use of the domain name, or future plans of such use, and further, where Respondent was aware of the Complainant’s registration of the MORGAN STANLEY mark, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Additionally, Complainant contends that Respondent registered and uses the <morganstanleyblock.com> domain name in bad faith because Respondent engages in disruption by using the resolving webpage to cause initial interest confusion. See Compl. Ex. 9.
Use of a disputed domain name to disrupt a complainant’s business which is not directly commercial competitive behavior is nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii). See 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)). Complainant argues that while it is not clear what potential goods or services Respondent may eventually offer, the confusion created with Internet users is disruptive to Complainant’s business.
In light of the lack of evidence as to the goods and services that Respondent will eventually offer, the Panel agrees that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Finally, Complainant asserts that Respondent had actual or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered <morganstanleyblock.com>. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find 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.”).
Evidence of the fame and notoriety of a mark can establish that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
Complainant provides business rankings and company profiles in support of the notoriety of the mark and its contention that Respondent had knowledge of Complainant’s rights in the mark at the time of registration. See Compl. Exs. 2 through 5.
The Panel, based on the record, is satisfied that Respondent had actual notice of Complainant’s rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(iii).
Respondent contends that the <morganstanleyblock.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s MORGAN STANLEY mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.
The Panel has addressed this argument in the section dealing with the Policy ¶ 4(a)(ii) discussion. Here, Respondent agrees that Complainant has rights in the MORGAN STANLEY mark, so the disputed domain name does not solely consist of generic terms.
Therefore, the Panel disagrees with Respondent and finds the disputed domain name is not common and generic.
Accordingly, the Panel agrees with Complainant and finds that the Respondent registered and used the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyblock.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: June, 13, 2019
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