Morgan Stanley v. Michael Kassabian
Claim Number: FA1910001868453
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Michael Kassabian (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyclientsrv.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 October 25, 2019; the Forum received payment on October 25, 2019.
On October 28, 2019, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <morganstanleyclientsrv.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 October 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@morganstanleyclientsrv.com. Also on October 31, 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 November 21, 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 to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant has rights in the MORGAN STANLEY and CLIENTSERV marks through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., MORGAN STANLEY - Reg. No. 1,707,196, registered Aug. 11, 1992; CLIENTSERV – Reg. No. 2,322,252, registered Feb. 22, 2000). See Compl. Ex. 6. Respondent’s <morganstanleyclientsrv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks as it combines the marks in their entirety, while misspelling the CLIENTSERV mark, eliminates the spaces between the marks, and adds a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <morganstanleyclientsrv.com> domain name. Respondent is not authorized to use Complainant’s MORGAN STANLEY or CLIENTSERV mark and is not commonly known by the disputed domain name. Additionally, Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to an inactive website. Respondent also engaged in typo squatting when it registered the disputed domain name.
Respondent registered and uses the <morganstanleyclientsrv.com> domain name in bad faith. Respondent fails to use the disputed domain name actively. Additionally, Respondent engaged in typo squatting when it registered the disputed domain name. Respondent also registered the disputed domain name with a privacy service. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY and CLIENTSERV marks prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities.
2. Complainant has established its trademark rights in the MORGAN STANLEY and CLIENTSERV marks through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., MORGAN STANLEY - Reg. No. 1,707,196, registered Aug. 11, 1992; CLIENTSERV – Reg. No. 2,322,252, registered Feb. 22, 2000).
3. Respondent registered the <morganstanleyclientsrv.com> domain name on October 11, 2019.
4. The disputed domain name resolves to an inactive website and Respondent also engaged in typo squatting when it registered the disputed 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, and 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 and CLIENTSERV marks based upon registration of the mark with the USPTO (e.g., MORGAN STANLEY - Reg. No. 1,707,196, registered Aug. 11, 1992; CLIENTSERV – Reg. No. 2,322,252, registered Feb. 22, 2000). See Compl. Ex. 6. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the MORGAN STANLEY and CLIENTSERV marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV trademarks. Complainant argues Respondent’s <morganstanleyclientsrv.com> domain name is confusingly similar to the MORGAN STANLEY and CLIENTSERV marks, as the name combines the marks in their entirety, while misspelling the CLIENTSERV mark, eliminating the spaces between the marks, and adding a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. 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 Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The Panel therefore determines that the <morganstanleyclientsrv.com> domain name is confusingly similar to the MORGAN STANLEY and CLIENTSERV marks per 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 and CLIENTSERV trademarks and to use them in its domain name, while misspelling the CLIENTSERV mark and eliminating the spaces between the mark that does not negate the confusing similarity between the domain and with Complainant’s trademark;
(b) Respondent registered the <morganstanleyclientsrv.com> domain name on October 11, 2019;
(c) Respondent caused the disputed domain name to resolve to an inactive website and Respondent also engaged in typo squatting when it registered the disputed domain name.;
(d) Respondent has used the disputed domain name to sell Complainant’s goods, or counterfeit versions of the same, for commercial gain;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues that Respondent has no rights or legitimate interests in the <morganstanleyclientsrv.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MORGAN STANLEY or CLIENTSERV mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Michael Kassabian,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <morganstanleyclientsrv.com> domain name;
(g) Complainant submits that Respondent’s inactive holding of the <morganstanleyclientsrv.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage. See Compl. Ex. 8. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant further argues that Respondent’s lack of rights or legitimate interests in the <morganstanleyclientsrv.com> domain name is indicated by its intentional misspelling of the CLIENTSERV mark within the domain name. Typo squatting may be evidence that a respondent lacks rights or legitimate interests in a disputed domain name 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 typo squatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant contends that the disputed domain name contains the CLIENTSERV mark, absent the letter “e.” The Panel therefore agrees with Complainant and finds that Respondent lacks rights or legitimate interests per Policy ¶ 4(a)(ii).
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, The Panel notes that Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, the Panel also notes that these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel may find Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Secondly, Complainant submits that Respondent’s failure to use the <morganstanleyclientsrv.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under 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).”). The Panel recalls Complainant’s contention that the domain name does not resolve to an active website. See Compl. Ex. 8. The Panel finds that Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant further argues that the intentional misspelling of Complainant’s CLIENTSERV mark within the <morganstanleyclientsrv.com> domain name constitutes typo squatting. Registration of a domain name that contains a common or intentional misspelling of a complainant’s mark may demonstrate bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typo squatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typo squatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel recalls that Complainant contends that the disputed domain name contains the CLIENTSERV mark, absent the letter “e.” The Panel therefore determines that Respondent’s registration of the <morganstanleyclientsrv.com> domain name constitutes typo squatting per Policy ¶ 4(a)(iii).
Fourthly, Complainant also contends that in light of the fame and notoriety of Complainant's MORGAN STANLEY or CLIENTSERV marks, it is inconceivable that Respondent could have registered the <morganstanleyclientsrv.com> domain name without actual and constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP prior decisions case generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate 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 agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
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 or CLIENTSERV marks 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 <morganstanleyclientsrv.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 21, 2019
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