Morgan Stanley v. Jack Franco
Claim Number: FA2011001920895
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Jack Franco (“Respondent”), New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgansfanley.com>, registered with Google 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2020; the Forum received payment on November 16, 2020.
On November 17, 2020, Google LLC confirmed by e-mail to the Forum that the <morgansfanley.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 November 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@morgansfanley.com. Also on November 18, 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 16, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Morgan Stanley, operates a full-service financial, investment, and wealth management company. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,707,196, registered Aug. 11, 1992). Respondent’s <morgansfanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark, only differing by changing the “T” in “STANLEY” to an “F” and adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <morgansfanley.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MORGAN STANLEY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. In fact, Respondent fails to make any use of the disputed domain name at all, as the domain name resolves to an inactive landing page. Respondent further shows a lack of rights or legitimate interests by engaging in typosquatting of Complainant’s MORGAN STANLEY mark.
Respondent registered and uses the <morgansfanley.com> domain name in bad faith as Respondent disrupts Complainant’s business by causing initial interest confusion. Respondent also engaged in typosquatting while registering the disputed domain name. Additionally, Respondent fails to make active use of the disputed domain name. Furthermore, given the notoriety of the Complainant’s MORGAN STANLEY mark, Respondent could not have registered such a similar domain name with any legitimate purpose in mind. Finally, Complainant argues Respondent registered the disputed domain name with actual or constructive knowledge of the 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 Jack Franco (Respondent), of Metuchen, NJ, USA. Respondent’s registrar’s physical address is not listed although a web address at <domains.google.com> is given. The Panel notes that the disputed domain name was registered on or about October 1, 2020.
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 its registration with the USPTO. Generally registration of a mark with a trademark agency, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration of the MORGAN STANLEY mark with the USPTO (e.g., Reg. 1,707,196, registered Aug. 11, 1992). The Panel here finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <morgansfanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark, differing only by changing the “T” in “STANLEY” to an “F” and adding the “.com” gTLD. Changing one letter to create a misspelling of the complainant’s mark which looks virtually identical to the complainant’s mark and adding a gTLD does not necessarily negate confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”). The Panel here finds the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under 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 argues that Respondent lacks rights and legitimate interests in the <morgansfanley.com> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the MORGAN STANLEY mark. When no response is submitted, relevant WHOIS information may be used to demonstrate that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Furthermore, when a privacy service is used and no response is given, the Panel may presume the Respondent is not commonly known by the disputed domain name. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Here, the relevant WHOIS information shows that Respondent used a privacy service; however, the registrar identifies the registrant of the disputed domain name as “Jack Franco”. The Panel here finds that Respondent is not known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <morgansfanley.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent engages in inactive holding of the disputed domain name. Failing to make active use of a disputed domain name does not qualify as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the landing page for the disputed domain name which show the page resolves to an inactive website. The Panel here finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant additionally alleges that Respondent engaged in typosquatting when registering the <morgansfanley.com> domain name, which further evinces a lack of rights or legitimate interests in the disputed domain name. Taking advantage of Internet user’s typographical errors generally provides evidence that a respondent lacks rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). The Panel here finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent registered and uses the <morgansfanley.com> domain name in bad faith because Respondent’s website disrupts Complainant’s business interests by causing initial interest confusion. Initial interest confusion displays bad faith under Policy ¶ 4(a)(iii) as it creates a likelihood of confusion among Internet users who are led to believe a respondent is or somehow associated with Complainant. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Creating a confusingly similar domain name to divert traffic from a complainant may qualify as a competing use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s website). Here the Panel finds that Respondent used initial interest confusion to divert users from Complainant and disrupted Complainant’s business interests, thus supporting a finding of bad faith registration and use under Policy ¶ 4(b)(iii) and ¶ 4(a)(iii).
Complainant further alleges that Respondent registered and uses the <morgansfanley.com> domain name in bad faith as Respondent fails to make active use of the disputed domain name. Failing to make use of a disputed domain name, especially in cases involving famous marks, may show bad faith under Policy ¶ 4(b)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour 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); see also Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). The Panel again notes that Complainant provides screenshots of the resolving webpage for the disputed domain name, which lands on an inactive website. The Panel here finds bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant also argues that Respondent registered and uses the <morgansfanley.com> domain name in bad faith as they used a common misspelling of Complainant’s MORGAN STANLEY mark to capitalize on Internet user’s typographical errors. Typosquatting has been found to display bad faith registration and use under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
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 <morgansfanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 30, 2020
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