Morgan Stanley v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1907001854232
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanlyclientserv.com>, registered with Media Elite Holdings Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2019; the Forum received payment on July 26, 2019.
On July 29, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <morganstanlyclientserv.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 July 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@morganstanlyclientserv.com. Also on July 29, 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 August 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark through 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). Additionally, Complainant has rights in the CLIENTSERV mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,322,252, registered Feb. 22, 2000).
2. Respondent’s <morganstanlyclientserv.com>[i] domain name is confusingly similar to Complainant’s marks as Respondent merely combines Complainant’s marks, removes the letter “e” in the MORGAN STANLEY mark and adds the “.com” generic top-level domain (“gTLD”).
3. Respondents has no rights or legitimate interests in the <morganstanlyclientserv.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s marks.
4. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as the domain name resolves to the website of a competitor of Complainant. Additionally, Respondent engaged in typosquatting when it registered the domain name.
5. Respondent registered and uses the <morganstanlyclientserv.com> domain name in bad faith. Respondent is disrupting Complainant’s business by redirecting users to a competing website.
6. Additionally, Respondent engaged in typosquatting when it registered the domain name. Respondent also registered the domain name with a privacy service.
7. Finally, Respondent had constructive knowledge of Complainant’s rights in the MORGAN STANLEY and CLIENT SERV marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY and CLIENT SERV marks. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENT SERV marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <morganstanlyclientserv.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights in the MORGAN STANLEY mark through 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). Additionally, Complainant has rights in the CLIENTSERV mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,322,252, registered Feb. 22, 2000). 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).”).
Complainant argues Respondent’s <morganstanlyclientserv.com> is identical or confusingly similar to Complainant’s marks, as Respondent merely combines the marks and adds the “.net” gTLD. Merely combining a complainant’s marks and adding a gTLD is not sufficient to distinguish a domain name from the marks under Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Additionally, merely removing one letter in a mark may be insufficient to distinguish and disputed domain name from the 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”). Therefore, Respondent’s <morganstanlyclientserv.com> is identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <morganstanlyclientserv.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <morganstanlyclientserv.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s marks. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by a 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 of record identifies the Respondent as “Domain Administrator/Fundacion Privacy Services LTD” and no information in the record indicates that Respondent was authorized to use Complainant’s marks or was commonly known by the <morganstanlyclientserv.com> domain name. Therefore, Respondent has no rights or legitimate interests in the <morganstanlyclientserv.com> domain name as Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent fails to use the <morganstanlyclientserv.com> domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather the Respondent the domain name resolves to the website of a competitor of Complainant. Use of a domain name incorporating the mark of another to divert Internet users seeking a complainant and redirecting them to another site for commercial gain is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provided a screenshot of the resolving webpage for the <morganstanlyclientserv.com> domain name, showing the <fidelity.com> domain name’s website, a competitor of the Complainant. Therefore, Respondent is not using the <morganstanlyclientserv.com> domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues Respondent has no rights or legitimate interests in the <morganstanlyclientserv.com> domain name as Respondent is typosquatting. Taking advantage of typographical errors is typosquatting and may not establish rights or legitimate interests under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). The <morganstanlyclientserv.com> domain name incorporates the MORGAN STANLEY mark, absent the letter “e.” Therefore, the Respondent is typosquatting under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <morganstanlyclientserv.com> domain name in bad faith, as Respondent is disrupting Complainant’s business by having the domain name redirect to a competitor of the Complainant. Registration and use of a domain incorporating the mark of another to redirect Internet users to a competitor of a complainant’s website is evidence of bad faith under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). Complainant provided a screenshot of the resolving webpage for the <morganstanlyclientserv.com> domain name, showing the website for a competitor of the Complainant. Therefore, the Panel holds Respondent registered and uses the <morganstanlyclientserv.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant has shown that Respondent has engaged in typosquatting which is evidence of bad faith under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
Finally, the Panel finds that Respondent had actual knowledge of Complainant's rights in the MORGAN STANLEY and CLIENT SERV marks prior to registering the <morganstanlyclientserv.com> domain name; actual knowledge is evidence of 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.”).
The Panel finds Complainant has satisfied 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 <morganstanlyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 29, 2019
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