Morgan Stanley v. Ashwini Rabadia
Claim Number: FA2011001920441
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Ashwini Rabadia (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleybond.com> and <ms-bond.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2020; the Forum received payment on November 12, 2020.
On November 13, 2020; November 14, 2020, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <morganstanleybond.com> and <ms-bond.com> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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, billing contacts, and to postmaster@morganstanleybond.com, postmaster@ms-bond.com. Also, on November 16, 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 December 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Morgan Stanley, is a financial services company. Complainant has rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered on November 11, 1992). Respondent’s <morganstanleybond.com> and <ms-bond.com> are identical or confusingly similar to Complainant’s MORGAN STANLEY mark as they merely add the generic term “bond” and the “.com” generic top-level domain (“gTLD”) to the MORGAN STANLEY mark or the “MS” abbreviation of that mark.
Respondent lacks rights or legitimate interests in the <morganstanleybond.com> and <ms-bond.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the MORGAN STANLEY mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names to resolve to Complainant’s own website.
Respondent registered and uses the <morganstanleybond.com> and <ms-bond.com> domain names in bad faith. Respondent uses the disputed domain names to disrupt Complainant’s business. Additionally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Morgan Stanley (Complainant), of New York, NY, USA. Complainant is the owner of domestic and international registrations for the mark MORGAN STANLEY, and numerous variations thereof that comprise the Morgan Stanley family of marks. Complainant has continuously used its MORGAN STANLEY mark since at least as early as 1935 in connection with its provision of a wide range of financial and investment services and products. Complainant is also the owner of <morganstanley.com> since 1996 and additionally owns thousands of variations across a broad spectrum of top-level domains.
Respondent is Ashwini Rabadia (Respondent), of London, United Kingdom. Respondent’s registrar’s address is listed as India. The Panel notes that the <morganstanleybond.com> and <ms-bond.com> domain names were registered on or about November 11, 2020 and November 13, 2020 respectively.
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 through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered on November 11, 1992). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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).”). The Panel here finds that Complainant has demonstrated rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <morganstanleybond.com> and <ms-bond.com> are identical or confusingly similar to Complainant’s MORGAN STANLEY mark as they merely add the generic term “bond” and the “.com” gTLD to the MORGAN STANLEY mark or the “MS” abbreviation of that mark. The addition of generic words and a gTLD to mark or common abbreviation of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta). The Panel here finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <morganstanleybond.com> and <ms-bond.com> domain names as Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the MORGAN STANLEY mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a 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 names). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. 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 names per Policy ¶ 4(c)(ii)”). Here, the WHOIS information for the disputed domain names lists the registrants as “Ashwini Rabadia,” and Complainant asserts that there is no evidence to indicate that Respondent was authorized to use the MORGAN STANLEY mark. The Panel here finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <morganstanleybond.com> and <ms-bond.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to redirect to Complainant’s own website. Using a confusingly similar domain name to redirect to Complainant’s own website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant argues Respondent uses the disputed domain names to pass itself off as Complainant by redirecting the disputed domain names to Complainant’s own site. The Panel here finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends Respondent registered and uses the <morganstanleybond.com> and <ms-bond.com> domain names in bad faith as Respondent uses the disputed domain names to pass itself as Complainant by redirecting the disputed domain names to Complainant’s own site. Using a disputed domain name to pass off as complainant can demonstrate bad faith per Policy ¶ 4(b)(iv). See MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant."). Here, Complainant argues Respondent’s resolving website that redirects to Complainant’s website creates a false association with Complainant and allows Respondent to potentially trade off the goodwill associated with the MORGAN STANLEY mark. The Panel here finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the MORGAN STANLEY mark at the time of registering the <morganstanleybond.com> and <ms-bond.com> domain names. The Panel may choose to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See 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).”). To support its assertion, Complainant points to its trademark registrations as well as its commercial presence and reputation. The Panel here finds that Respondent did have actual knowledge of Complainant’s right in the mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleybond.com> and <ms-bond.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 28, 2020
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