Morgan Stanley v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1906001849227
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 <morgstanley.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.
Petter Rindforth 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 <morgstanley.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 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@morgstanley.com. Also on June 24, 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 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 its MORGAN STANLEY trademark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992).
Respondent’s <morgstanley.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely removes the “an” from MORGAN STANLEY and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <morgstanley.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 trademark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is inactively holding the disputed domain name and currently offering it for sale. Additionally, Respondent is typosquatting.
Respondent’s <morgstanley.com> domain name was registered and is being used in bad faith as Respondent is offering the disputed domain name for sale. Respondent is attempting to create initial interest confusion, potentially disrupting Complainant’s business. Next, Respondent is attempting to attract Internet users for commercial gain by using a parked webpage that offers hyperlinks. Finally, Respondent had constructive knowledge of Complainant’s right in the MORGAN STANLEY trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,707,196 MORGAN STANLEY (word), registered August 11, 1992 for services in class 36; and
No. 4,470,389 MORGAN STANLEY (word), registered January 21, 2014 for goods in class 9 and 16.
Respondent registered the disputed domain name <morgstanley.com> on June 6, 2019.
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 asserts rights in its MORGAN STANLEY trademark through registration with the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). Registration with the USPTO is sufficient to demonstrate rights in a trademark 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 trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <morgstanley.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely removes the “an” from MORGAN STANLEY and adds the “.com” gTLD. The mere removal of letters within a trademark is normally not sufficient to distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See 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.). In this case, as the Complainant’s trademark consists of two words, and the disputed domain name is a combination of the initial four letters of the first six letter word, followed by the full seven letter version of the second word of the Complainant’s trademark, the two letter removal makes no change for the normal Internet users initial impression that the disputed domain name consists of a full and complete version of the Complainant’s trademark. The Panel therefore finds that Respondent’s <morgstanley.com> domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 interest in the <morgstanley.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 trademark. Relevant information, such as WHOIS information, can be used as evidence to show that 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 trademark 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)”).
In the present case, there is nothing in the record to suggest that Complainant has authorized or licensed Respondent to use the Complainant’s trademark. Additionally, the provided WHOIS information identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as Respondent. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <morgstanley.com> domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent has no rights or legitimate interest in the <morgstanley.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 is inactively holding the disputed domain name which shows various hyperlinks. Inactively holding of a disputed domain name that merely is populated with unrelated hyperlinks may not be a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Here, Complainant provides a screenshot of the resolving webpage for the <morgstanley.com> domain name, showing various pay-per-click hyperlinks for products such as “Best Penny Stocks” and “music videos,” neither of which Complainant is in the business of providing. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <morgstanley.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).
Additionally, Complainant argues that Respondent has no rights or legitimate interest in the <morgstanley.com> domain name as Respondent is currently offering the disputed domain name 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 <morgstanley.com> domain name for sale for 899.00 USD. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <morgstanley.com> domain name as Respondent is currently offering the disputed domain name for sale under Policy ¶ 4(a)(ii).
Finally, Complainant argues Respondent has no rights or legitimate interest in the <morgstanley.com> domain name as Respondent is 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 removed the letters “an” from Complainant’s trademark. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <morgstanley.com> domain name as Respondent is typosquatting under Policy ¶ 4(a)(ii).
Complainant argues Respondent’s <morgstanley.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 may be 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). In this case, as noted above, Complainant provides a screenshot of a domain name auction site, showing <morgstanley.com> domain name for sale for 899.00 USD. Therefore, the Panel finds that Respondent’s <morgstanley.com> domain name was registered and is being used in bad faith, as Respondent is offering the disputed domain name for sale under Policy ¶ 4(b)(i).
Next, Complainant argues Respondent’s <morgstanley.com> domain name was registered and is being used in bad faith, as Respondent is attempting to attract internet users for commercial gain by using a parked webpage that offers unrelated hyperlinks. Use of a disputed domain name to offer unrelated hyperlinks for commercial gain is evidence of bad faith under Policy ¶¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The screenshot provided by the Complainant clearly shows that Respondent is using <morgstanley.com> for a web site with various pay-per-click hyperlinks for products not related to the Complainant. Therefore, the Panel finds Respondent’s <morgstanley.com> domain name was registered and is being used in bad faith per Policy ¶¶ 4(b)(iv).
Additionally, Complainant argues Respondent’s <morgstanley.com> domain name was registered and is being used in bad faith, as Respondent is attempting to cause initial interest confusion. Registering a disputed domain name that would lead Internet users to believe it is connected with complainant is initial interest confusion, and can be evidence of bad faith under Policy ¶ 4(a)(iii). See 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 points to the fame of its MORGAN STANLEY trademark. The Panel agrees with the Complainant, and finds that the <morgstanley.com> domain name was registered and is being used in bad faith per Policy ¶ 4(a)(iii).
Furthermore, Complainant argues Respondent’s <morgstanley.com> domain name was registered and is being used in bad faith as Respondent is inactively holding the disputed domain name. Keeping a disputed domain name in an inactive state, merely populated with parked hyperlinks can be evidence of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel, referring the fact that the resolving webpage for the <morgstanley.com> domain name only shows various pay-per-click hyperlinks generated upon creation and showing no active use, agrees with the Complainant and finds that Respondent’s <morgstanley.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).
Finally, Complainant argues that Respondent’s <morgstanley.com> domain name was registered and is being used in bad faith, as Respondent is typosquatting with constructive knowledge of Complainant MORGAN STANLEY trademark. The Panel disregards 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.”). As the Panel noted above, the minor amendment of the Complainant’s two word trademark, as seen in the disputed domain name, makes no change for the normal Internet users initial impression that the disputed domain name <morgstanley.com> consists of a full and complete version of the Complainant’s trademark. The Panel cannot draw any other conclusions of this fact, than that Respondent is typosquatting and that Respondent had actual knowledge of Complainant’s rights in its MORGAN STANLEY trademark, thus constituting bad faith 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 <morgstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 23, 2019
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