Morgan Stanley v. NITIN KUMAR / NA
Claim Number: FA2006001898766
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is NITIN KUMAR / NA (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleygroup.org>, registered with OwnRegistrar, Inc..
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2020; the Forum received payment on June 3, 2020.
On June 4, 2020, OwnRegistrar, Inc. confirmed by e-mail to the Forum that the <morganstanleygroup.org> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, Inc. 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 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@morganstanleygroup.org. Also on June 5, 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 July 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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, Morgan Stanley, offers financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark based upon the registration 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 <morganstanleygroup.org> domain name is virtually identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s MORGAN STANLEY mark in whole, merely adding the generic term “group” and the “.com” generic top-level domain (“gTLD”).
2. Respondent does not have rights or legitimate interests in the <morganstanleygroup.org> domain name. Respondent is not authorized to use the Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent does not make any active use of the domain name.
3. Respondent registered and uses the <morganstanleygroup.org> domain name in bad faith. Respondent has created the opportunity to impersonate Complainant and phish for consumer’s personal information. Additionally, Respondent fails to make any active use of the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
1. Respondent did not submit a response.
1. Respondent’s <morganstanleygroup.org> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleygroup.org> domain name.
3. Respondent registered or used the <morganstanleygroup.org> 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 asserts rights in the MORGAN STANLEY mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of 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 provides evidence of registration of the MORGAN STANLEY mark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <morganstanleygroup.org> domain name is virtually identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s MORGAN STANLEY mark in whole, merely adding the generic term “group” and the “.com” gTLD. Addition of a generic or descriptive term and a gTLD does not negate confusing similarity between a domain name and a mark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Thus, the Panel agrees with Complainant that the disputed domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <morganstanleygroup.org> domain name since Respondent is not authorized to use Complainant’s mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Also, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Nitin Kumar” and no information indicates that Complainant authorized Respondent to use the mark. See Compl. Ex. 7. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent doesn’t use the <morganstanleygroup.org> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent does not make any active use of the domain name. Inactive holding of a domain name is generally not considered a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (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)). Here, Complainant provides a screenshot of the resolving webpage which displays a placeholder website template. See Compl. Ex. 8. Complainant also claims that Respondent’s website suggests that Respondent will use the domain name to impersonate Complainant and phish for consumers’ personal information. Thus, the Panel finds that Respondent use of the disputed domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
While Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant argues that Respondent registered and uses the <morganstanleygroup.org> domain name in bad faith since Respondent may use the domain name to impersonate Complainant and phish for consumers’ personal information. Use of a domain name to pass off as a complainant in furtherance of a phishing scheme is evidence of bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Although Complainant presents no evidence that Respondent currently uses the disputed domain name for phishing, Complainant argues that the current website template is likely to be used for Respondent to pass off as Complainant as part of a phishing scheme. Complainant provides a screenshot of the website resolving at the disputed domain name. See Compl. Ex. 8. The Panel finds the evidence sufficient to prove passing off behavior and finds bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered and uses the <morganstanleygroup.org> domain name in bad faith since Respondent fails to make any active use of the disputed domain name. Passive holding of a disputed domain name can support a finding of bad faith registration and use per 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).”). Complainant provides a screenshot of the resolving webpage. See Compl. Ex. 8. Complainant argues that Respondent’s generic website template is not an active use of the domain name. The Panel agrees and finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Additionally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the mark. While constructive knowledge is insufficient to support a finding of bad faith, actual knowledge of a complainant’s rights in a mark may evidence 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.”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant claims that Respondent must have had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark based upon Complainant’s long and well-established reputation. The Panel agrees that actual knowledge is evident and finds bad faith registration and use 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 <morganstanleygroup.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 15, 2020
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