Morgan Stanley v. Nathan De Silva
Claim Number: FA1906001847840
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Nathan De Silva (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleydigitalassets.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2019; the Forum received payment on June 13, 2019.
On June 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleydigitalassets.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 June 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@morganstanleydigitalassets.com. Also on June 19, 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 July 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 offers a full range of financial, investment, and wealth management services. Complainant has rights in its MORGAN STANLEY mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). See Amend. Compl. Ex. 6. Respondent’s <morganstanleydigitalassets.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “digital assets” and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <morganstanleydigitalassets.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as the disputed domain name resolves to a website that is inactive and passively held.
Respondent’s <morganstanleydigitalassets.com> domain name was registered and is being used in bad faith, as the Respondent is attempting to disrupt Complainant’s business by causing initial interest confusion. Additionally, Respondent is inactively holding the disputed domain name. Finally, Respondent had constructive knowledge of Complainant’s right in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the financial services industry that offers a full range of financial, investment, and wealth management services.
2. Complainant has established its trademark rights in its MORGAN STANLEY mark through 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 <morganstanleydigitalassets.com> domain name on May 11, 2019.
4. The disputed domain name resolves to a website that is inactive and passively held.
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 its MORGAN STANLEY mark through registration with the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). See Amend. Compl. Ex. 6. Registration with the USPTO is sufficient to demonstrate rights in a mark under 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 that the Complainant has rights in the MORGAN STANLEY mark under 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 <morganstanleydigitalassets.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “digital assets” and the “.com” gTLD. The addition of descriptive words and a gTLD is not sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See 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).”). Therefore, the Panel finds Respondent’s <morganstanleydigitalassets.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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, adding the descriptive term “digital assets” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <morganstanleydigitalassets.com> domain name on May 11, 2019;
(c) The disputed domain name resolves to a website that is inactive and passively held;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interest in the <morganstanleydigitalassets.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, Complainant provides the WHOIS information for the <morganstanleydigitalassets.com> domain name, with verification showing “Nathan De Silva” as the registrant of the disputed domain name, and there is no evidence in the record to suggest Respondent was authorized to use the mark. See Amend. Compl. Ex. 7. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <morganstanleydigitalassets.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent has no rights or legitimate interest in the <morganstanleydigitalassets.com> domain name as Respondent’s use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent does not make active use of the disputed domain name. Non-use or leaving a disputed domain name inactive is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Complainant provides a screenshot of the resolving webpage for the <morganstanleydigitalassets.com> domain name, showing a message that reads “website coming soon!” See Amend. Compl. Ex. 8. Therefore, the Panel finds Respondent has no rights or legitimate interests in the <morganstanleydigitalassets.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
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, Complainant argues Respondent’s <morganstanleyonline.online> domain name was registered and is being used in bad faith, as Respondent is attempting to disrupt Complainant’s business by causing initial interest confusion. Use of a disputed domain name that creates a perception of affiliation between respondent and complainant to confuse internet users and disrupt complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).); 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). Here, Complainant provides a screenshot of the resolving webpage for the <morganstanleydigitalassets.com> domain name, showing a message informing Internet users that the “website coming soon!”, which Complainant argues can lead Internet users to believe Respondent and Complainant are connected and that Complainant is not prepared to provide a good or service to the user. See Amend. Compl. Ex. 8. As the Panel agrees, the Panel finds Respondent’s <morganstanleydigitalassets.com> domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues Respondent’s <morganstanleydigitalassets.com> domain name was registered and is being used in bad faith, as Respondent is inactively holding the disputed domain name. Non-use or leaving a disputed domain name inactive can be evidence of bad faith under Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Here, Complainant provides a screenshot of the resolving webpage for the <morganstanleydigitalassets.com> domain name, showing a message informing Internet users that the “website coming soon!” with no other content available. See Amend. Compl. Ex. 8. Therefore, the Panel finds Respondent’s <morganstanleydigitalassets.com> domain name was registered and is being used in bad faith, as Respondent is inactively holding the disputed domain name under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent’s <morganstanleydigitalassets.com> domain name was registered and is being used in bad faith, as Respondent had knowledge of Complainant’s right in the MORGAN STANLEY mark. 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.”). Use of a well-known or famous mark in a dispute domain name can show actual knowledge of a complainant’s rights in the mark at the time of registration, thus constituting bad faith per Policy ¶ 4(a)(iii). 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). Here, Complainant points to the fame of its MORGAN STANLEY mark and provides a copy of Complainant’s company profile on Reuters, excerpts from Complainant’s own website, and brand ranking reports for Complainant’s company. See Amend. Compl. Exs. 4, 5, and 6. Therefore, the Panel finds Respondent’s <morganstanleydigitalassets.com> domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii).
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 <morganstanleydigitalassets.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 12, 2019
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