Morgan Stanley v. peggy cumberledge / island service
Claim Number: FA2002001883009
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is peggy cumberledge / island service (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moreganstanley.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2020; the Forum received payment on February 12, 2020.
On February 13, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <moreganstanley.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@moreganstanley.com. Also on February 13, 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 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the MORGAN STANLEY trademark established by its ownership of the abovementioned United States registrations and its use of the mark providing a range of financial, investment, and wealth management services across the world with over 1,000 offices in over 40 countries, having over 55,000 employees worldwide and net revenues of over US$ 40,000,000,000 in 2018.
Complainant submits that the disputed domain name is a deliberate misspelling of its MORGAN STANLEY trademark which is virtually identical or confusingly similar to Complainant’s registered marks. Complainant submits that it is well-settled that a domain name that is a common mistyping or misspelling of a mark is categorized a being is confusingly similar to that mark. See Morgan Stanley v. Purple Bucquet / Purple, FA 1336613 (Forum Sept. 6, 2010) (domain name MARGANSTANLEY.COM confusingly similar to complainant’s MORGAN STANLEY trademarks). Complainant adds that the addition of the gTLD < .com> extension and elimination of spaces fail to obviate the confusing similarity. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because neither the name MORGAN STANLEY nor the disputed domain name is part of Respondent’s name; that prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under either the name MORGAN STANLEY or the disputed domain name; and that Respondent was not commonly known by those names.
Complainant asserts that Respondent has no relationship whatsoever with Complainant; that Respondent is not a licensee of Complainant; nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY marks or the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Complainant adds that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. It is submitted that the disputed domain name is being passively held and does not resolve to an active website. A screen-shot of the webpage to which the disputed domain name resolves is annexed to the Complaint which merely states: “This site can’t be reached moreganstanley.com’s server IP address could not be found. Try running Windows Network Diagnostics. DNS_PROBE_FINISHED_NXDOMAIN.”
Complainant submits that passive holding of a domain name does not qualify as a legitimate use or bona fide offering of goods or services. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006) (“passive holding of a domain name does not constitute ‘legitimate non-commercial or fair use’”).
Complainant further submits that Respondent is engaged in typosquatting i.e., intentional misspelling Complainant’s MORGAN STANLEY mark in the disputed domain name and that its MORGAN STANLEY marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. Complainant argues that trading on its goodwill in such circumstances is not a legitimate or bona fide use of the disputed domain name. See Drexel University v. David Brouda, D2001-0067 (WIPO Mar. 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”).
Complainant submits that the disputed domain name was registered and is being used in bad faith, arguing that it is clearly more than a coincidence that Respondent chose and registered the disputed domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant asserts that it has a long and well-established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world. Complainant argues that there can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when she chose and registered the disputed domain name.
Complainant submits that Respondent intentionally chose and registered the disputed domain name because it is a common misspelling of Complainant’s MORGAN STANLEY mark and argues that this alone constitutes evidence of bad faith registration of the domain name. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM).
Complainant’s marks are so well-known that Respondent would be hard-pressed to provide any legitimate explanation for registering the disputed domain name other than to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY marks. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith).
Complainant submits that the use of the disputed domain name causes “initial interest confusion,” which is disruptive to Complainant, its business, and goodwill in the MORGAN STANLEY marks and is also not a legitimate use of a domain name or bona fide offering of goods and services. See Retail Royalty Co. and AE Direct Co LLC v. A K, FA 1580871 (Forum Oct. 31, 2014) (no legitimate interest or bona fide offering with respect to domain name that caused initial interest confusion).
Complainant submits that Respondent’s failure to make active use of the disputed domain name and passive holding is evidence of bad faith use and registration. See Kohl's Illinois, Inc. v. c/o kphls.com; c/o kohals.com; c/o kohlsdepartmentstore.com; c/o khols.com, FA 1442950 (Forum June 7, 2012) (“Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under Policy ¶ 4(a) (iii)”); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that respondent’s failure to make active use of its domain name indicated that respondent registered disputed domain name in bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a publicly traded company listed on the New York Stock Exchange since 1986 providing financial services in numerous jurisdictions across the world and is the owner of the following trademark registrations:
· United States registered service mark, MORGAN STANLEY, registration number 1,707,196, registered on August 11, 1992 on the Principal Register for services in international class 36; and
· United States registered trademark, MORGAN STANLEY, registration number 4,470, 389, registered on January 21, 2014 on the Principal Register for goods in International classes 9 and 16.
The disputed domain name was registered on January 14, 2020 and is being passively held by Respondent resolving to an inactive web page.
There is no information available about Respondent except for that which is supplied in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for details of the registration of the disputed domain name for the purposes of administering this Complaint.
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 disputed domain name <moreganstanley.com>, consists of a misspelling of Complainant’s MORGAN STANLEY trademark with the additional letter “e” but without the space between the two words and the addition of the gTLD < .com> extension.
Having compared both, this Panel finds that the disputed domain name is confusingly similar and almost identical to the MORGAN STANLEY mark in which Complainant has rights. The additional letter “e” is likely to be unnoticed by Internet users coming across it by mis-typing or otherwise; the space between the two words is typical of how trademarks are presented in domain names; and the addition of gTLD “.com” irrelevant for purposes of evaluating its characteristics for the purposes of the Policy.
This Panel finds that therefore the disputed domain name <moreganstanley.com>, is confusingly similar to the trademark MORGAN STANLEY in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that neither the words, name and mark MORGAN STANLEY nor the disputed domain name are part of Respondent’s name; that prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name; that Respondent is not commonly known by the name MORGAN STANLEY; that Respondent has no relationship whatsoever with Complainant; that Respondent is not a licensee of Complainant; that Respondent has never been authorized by Complainant to register or use the MORGAN STANLEY marks or the disputed domain name; that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use; that the disputed domain name is being passively held and does not resolve to an active website; that Respondent is engaged in typosquatting and the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks.
It is well established that when a complainant makes out a prima facie case, the burden of production shifts to the respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
As Complainant submits, it clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. The trademark created by the combination of the two names is very distinctive and there can be little doubt that Respondent was aware of Complainant’s MORGAN STANLEY name and mark when she chose and registered the almost identical disputed domain name.
This Panel finds that on the balance of probabilities, the registrant created and registered the disputed domain name for the purposes of typosquatting, because of its confusing similarity to Complainant’s well-known name and mark, intending to take predatory advantage of that confusion. Complainant’s name and marks.
Respondent’s failure to make active use of, and her passive holding of the disputed domain name is further evidence of bad faith and so this Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moreganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 7, 2020
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