Morgan Stanley v. Stuart Cohen / Asset Land
Claim Number: FA2002001882425
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondent is Stuart Cohen / Asset Land (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgan-stanley.group>, 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 February 7, 2020; the Forum received payment on February 7, 2020.
On February 10, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morgan-stanley.group> 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 February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 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@morgan-stanley.group. Also on February 10, 2020, 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 March 3, 2020 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, Morgan Stanley, 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). See Compl. Ex. 6. Respondent’s <morgan-stanley.group> domain name is confusingly similar to Complainant’s mark as Respondent merely removes spacing then adds a hyphen and the “.group” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondents has no rights or legitimate interests in the <morgan-stanley.group> 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 Respondent is merely passively holding the disputed domain name.
Respondent registered and uses the <morgan-stanley.group> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by causing confusion among Internet users, and there is no conceivable way for Respondent to use the disputed domain without further infringement of Complainant’s mark. Additionally, Respondent fails to make an active use of the disputed domain name. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in its MORGAN STANLEY mark.
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.
2. Complainant has established its trademark 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).
3. Respondent registered the <morgan-stanley.group> domain name on January 30, 2020.
4. Respondent is merely passively holding the disputed domain name, showing that it has no rights or legitimate interests in the domain name and that it was registered and used 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in its MORGAN STANLEY mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See 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 <morgan-stanley.group> domain name is confusingly similar to Complainant’s mark as Respondent merely removes spacing then adds a hyphen and the “.group” gTLD to Complainant’s mark. Altering a complainant’s mark by removing spacing is considered irrelevant for distinguishing a complainant’s mark from a disputed domain name under Policy ¶ 4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). Additionally, the addition of a hyphen and gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Therefore, the Panel finds Respondent’s <morgan-stanley.group> 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, merely removing the space in the trademark then adding a hyphen and the “.group” gTLD which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <morgan-stanley.group> domain name on January 30, 2020;
(c) Respondent has caused the domain name to be 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 interests in the <morgan-stanley.group> 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. Where a response is lacking, relevant 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 Panel notes the WHOIS of record identifies the Respondent as “Stuart Cohen” and no information in the record indicates that Respondent was authorized to use Complainant’s MORGAN STANLEY mark or was commonly known by the disputed domain name. See Compl. Ex. 7. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <morgan-stanley.group> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <morgan-stanley.group> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name. Inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to be a parked webpage. See Compl. Ex. 8. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or 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 that Respondent has registered and uses the <morgan-stanley.group> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety—Complainant’s MORGAN STANLEY mark, and giving the impression that interested individuals will receive information regarding Complainant, the fact is individuals are sent to a blank web page. See Compl. Ex. 8. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent is inactively holding the disputed domain name. The disputed domain name has no conceivable use that would not infringe on Complainant’s mark. Bad faith can be found when a disputed domain name infringes on a famous mark and is then left inactive under Policy ¶ 4(a)(iii). See Alitalia –Line Aerie Italian S.p.A v. Color Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel recalls that Complainant provides screenshots of the resolving webpage of the <morgan-stanley.group> domain name which appears to display a parked webpage. See Compl. Ex. 8. Complainant also provides evidence of the fame of its MORGAN STANLEY mark through various financial data and business reports. See Compl. Exs. 3, 4 and 5. Therefore, the Panel finds that Respondent’s <morgan-stanley.group> domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the <morgan-stanley.group> domain name in bad faith because Respondent had actual and/or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark. Although panels have generally not regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in the mark prior to registering a disputed domain name 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.”). Here, Complainant argues that its MORGAN STANLEY marks are well known and registered around the world. Complainant provides screenshots of financial data and business reports to indicate the fame of its mark. See Compl. Exs. 3, 4, and 5. As such, the Panel determines that Respondent had actual knowledge of Complainant’s rights in its MORGAN STANLEY mark under Policy ¶ 4(a)(iii) when it registered the disputed domain name.
Fourthly, 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 since registering the 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 <morgan-stanley.group> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 4, 2020
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