Morgan Stanley v. Mario Nuland / diesel power holand
Claim Number: FA1905001843756
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondent is Mario Nuland / diesel power holand (“Respondent”), North Carolina, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganastaniey.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2019; the Forum received payment on May 17, 2019.
On May 20, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <morganastaniey.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@morganastaniey.com. Also on May 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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 made the following contentions.
Complainant operates in the financial services industry. 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 <morganastaniey.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark because it incorporates Complainant’s MORGAN STANLEY mark, and merely adds an “a” and the “.com” generic top-level domain (“gTLD”) as well as changes the “l” to an “i.”
Respondent lacks rights or legitimate interests in the <morganastaniey.com> domain name. Respondent is not 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 the disputed domain name resolves to an inactive webpage. See Compl. Ex 8. Furthermore, Respondent’s typosquatting is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent registered and uses the <morganastaniey.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain name and causes initial interest confusion. Respondent had actual knowledge of Complainant’s MORGAN STANLEY mark prior to registering the disputed domain name. Finally, Respondent chose the disputed domain name because it is a typosquatted version of Complainant’s legitimate domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates in the financial services industry.
2. Complainant has established it trademark 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).
3. Respondent registered the <morganastaniey.com> domain name on April 15, 2019.
4. The Respondent has caused the disputed domain name to resolve to an inactive webpage and has engaged in typosquatting.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has 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).”) Therefore, the Panel finds Complainant has rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant argues Respondent’s <morganastaniey.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark because it incorporates Complainant’s MORGAN STANLEY mark, and merely adds an “a” and the “.com” gTLD as well as changes the “l” to an “i”. The addition of letters which constitute common misspellings along with the addition of a gTLD are sufficient to establish confusing similarity. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’). Here, Complainant argues “morganastaniey” is a common misspelling of the MORGAN STANLEY mark. Thus, the Panel agrees with Complainant and finds Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s MORGAN STANLEY mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY trademark and to use it in its domain name, merely adding an “a” and changing the “l” to an “i” which does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <morganastaniey.com> domain name on April 15, 2019;
(c) The Respondent has caused the disputed domain name to resolve to an inactive webpage and has engaged in typosquatting;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <morganastaniey.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 that Respondent is known as “Mario Nuland / diesel power holand” and no information of the record indicates that Respondent was authorized to use the Complainant’s MORGAN STANLEY mark. See Compl. Ex. 7. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent has no rights or legitimate interests in the <morganastaniey.com> domain name as 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 the disputed domain name resolves to an inactive webpage. See Compl. Ex 8. An inactive holding of a disputed domain name 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). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“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).”). Therefore, 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);
(g) Complainant argues Respondent’s typosquatting is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. A respondent’s acts of typosquatting can provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). The Panel recalls that Complainant argued “morganastaniey” is a common misspelling of the MORGAN STANLEY mark. Thus, the Panel agrees that Respondent’s typosquatting is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Secondly, Complainant asserts that Respondent had 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 the <morganastaniey.com> domain name. 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.”). Use of a famous and notorious mark in registering a domain name may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a) (iii).”). Complainant argues that based on the fame of the mark, Respondent must have had actual knowledge of Complainant’s rights in the mark. Complainant provides brand ranking reports and a company profile from Reuters in support of this contention. See Compl. Ex. 3 and 5. Thus, as the Panel agrees, the Panel finds that Respondent had actual notice of Complainant’s rights in the MORGAN STANLEY mark, constituting bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent registered and uses the <morganastaniey.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain name. See Compl. Ex. 8. A respondent’s failure to use a domain name actively can be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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).”). Therefore, the Panel agrees that Respondent registered and uses the <morganastaniey.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain name.
Fourthly, Complainant argues Respondent engaged in bad faith registration and use because Respondent chose the <morganastaniey.com> domain name by typosquatting Complainant’s legitimate domain name. A respondent’s typosquatting has been held as evidence that a disputed domain name was registered and used in bad faith. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Therefore, the Panel finds that Respondent engaged in bad faith registration and use because Respondent chose the disputed domain name by typosquatting Complainant’s legitimate domain name.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MORGAN STANLEY mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganastaniey.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown
June 15, 2019
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