Morgan Stanley v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1906001849225
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moganstnleyclientserv.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2019; the Forum received payment on June 23, 2019.
On June 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <moganstnleyclientserv.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 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@moganstnleyclientserv.com. Also on June 26, 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 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992) and the CLIENTSERV mark (e.g. Reg. No 2,322,252, registered Feb. 22, 2000) through registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <moganstnleyclientserv.com> domain name is confusingly similar to Complainant’s marks as it merely removes the letters “r” and “a” from the MORGAN STANLEY mark, combines Complainant’s MORGAN STANLEY mark with Complainant’s CLIENTSERV, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <moganstnleyclientserv.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 not 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 attempts to engage in phishing or place malware on the Internet user’s computer device.
Respondent’s <moganstnleyclientserv.com> domain name was registered and is being used in bad faith, as the Respondent is attempting to attract internet users for commercial gain. Additionally, Respondent offers the disputed domain name for sale. Respondent engages in typosquatting. Furthermore, Respondent is using the disputed domain name to engage in phishing. Finally, Respondent had constructive or actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <moganstnleyclientserv.com> domain name.
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”).
Complainant claims rights in the MORGAN STANLEY mark (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992) and the CLIENTSERV mark (e.g. Reg. No 2,322,252, registered Feb. 22, 2000) through registrations with the USPTO. 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).”). The Panel finds that the Complainant has rights in the MORGAN STANLEY and CLIENTSERV marks under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <moganstnleyclientserv.com> domain name is confusingly similar to Complainant’s marks as it merely removes the letters “r” and “a” from the MORGAN STANLEY mark, combines Complainant’s MORGAN STANLEY mark with Complainant’s CLIENTSERV, and adds the “.com” gTLD. Omission of a letter from a wholly incorporated mark is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). Additionally, combining two marks owned by a complainant is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Therefore, the Panel finds that Respondent’s <moganstnleyclientserv.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <moganstnleyclientserv.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)”). The WHOIS information for the <moganstnleyclientserv.com> domain name shows “Carolina Rodrigues/ Fundacion Comercio Electronico” 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. The Panel finds that that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has no rights or legitimate interest in the <moganstnleyclientserv.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent has the disputed domain name resolves to a website that attempts to engage in a phishing scheme. Use of a disputed domain name to bait internet users into divulging personal of financial information is phishing and is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Complainant provides a screenshot of the resolving webpage for the <moganstnleyclientserv.com> domain name, showing a fake message instructing the user to click “I’m Human” on a “security check” that will secretly download adware onto the user’s computer. The Panel finds that 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) and (iii).
Complainant argues that Respondent has no rights or legitimate interest in the <moganstnleyclientserv.com> domain name as Respondent has the disputed domain name up for sale. Offering a disputed domain name for sale to the public can be evidence of a lack of rights or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant provides a screenshot of a domain name auction site, showing <moganstnleyclientserv.com> domain name for sale for 899.00 USD. The Panel finds that Respondent is currently offering the disputed domain name for sale under Policy ¶ 4(a)(ii), evidence that Respondent has no rights or legitimate interests in respect of the <moganstnleyclientserv.com> domain name
Complainant argues Respondent has no rights or legitimate interest in the <moganstnleyclientserv.com> domain name as Respondent engages in typosquatting. Acts of typosquatting can be further evidence of a lack of rights or legitimate interest in the disputed domain name under 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).”). Here, Complainant points to the fact that Respondent merely removes the letters “r” and “a” from Complainant’s MORGAN STANLEY mark. The Panel finds Respondent is engaged in typosquatting under Policy ¶ 4(a)(ii) and finds that Respondent has no rights or legitimate interests in respect of the <moganstnleyclientserv.com> domain name.
Complainant has proved this element.
Complainant argues Respondent’s <moganstnleyclientserv.com> domain name was registered and is being used in bad faith, as Respondent is attempting to attract internet users for commercial gain by passing off as Complainant. Use of a disputed domain name to deceive internet users into believing an affiliation exists between respondent and complainant for commercial gain under Policy ¶ 4(b)(iv) is evidence of bad faith. See 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.”). Here, Complainant provided a screenshot of the resolving webpage for the <moganstnleyclientserv.com> domain name, showing Complainant’s mark and a security verification button. The Panel finds Respondent is attempting to attract internet users for commercial gain under Policy ¶ 4(b)(iv).
Complainant argues Respondent’s <moganstnleyclientserv.com> domain name was registered and is being used in bad faith, as Respondent is offering the disputed domain name for sale. A public offering of a domain for sale is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). Here, Complainant provides a screenshot of a domain name auction site, showing <moganstnleyclientserv.com> domain name for sale for 899.00 USD. Respondent is offering the disputed domain name for sale under Policy ¶ 4(b)(i) The Panel finds that Respondent is offering the disputed domain name for sale under Policy ¶ 4(b)(i), evidence that Respondent’s <moganstnleyclientserv.com> domain name was registered and is being used in bad faith.
Complainant argues Respondent’s <moganstnleyclientserv.com> domain name was registered and is being used in bad faith, as Respondent is engaging in a phishing scheme. Use of a disputed domain name to bait internet users into divulging personal of financial information is phishing and can be evidence of bad faith under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the resolving webpage for the <moganstnleyclientserv.com> domain name, showing a fake message instructing the user to click “I’m Human” on a “security check” that will secretly download adware onto the user’s computer. The Panel finds that Respondent is engaged in phishing, evidence that Respondent’s <moganstnleyclientserv.com> domain name was registered and is being used in bad faith.
Complainant argues Respondent’s <moganstnleyclientserv.com> domain name was registered and is being used in bad faith, as Respondent engages in typosquatting with constructive knowledge of Complainant MORGAN STANLEY mark. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.”). However, typosquatting is evidence of bad faith, and can be evidence that respondent had actual knowledge of complainant’s right in its mark under Policy ¶ 4(a)(iii). See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inference [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”). Complainant points to the fact that Respondent merely removes the letters “a” and “r” from Complainant’s mark, and presents evidence of the fame of its MORGAN STANLEY mark. The Panel finds that Respondent has engaged in typosquatting, evidence that Respondent had actual knowledge of Complainant’s rights in its MORGAN STANLEY mark under Policy ¶ 4(a)(iii) and the Panel further finds that Respondent registered and uses the domain name in bad faith.
Complainant has proved this element.
DECISION
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 <moganstnleyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 19, 2019
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