DECISION

 

Morgan Stanley v. Stephen Thorpe / vrtx agency

Claim Number: FA2012001925710

 

PARTIES

Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Stephen Thorpe / vrtx agency (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 19, 2020; the Forum received payment on December 19, 2020.

 

On December 22, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2021 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@morganstanleycryptocurrencies.com, postmaster@morganstanleybitcoinetf.com, postmaster@morganstanleybtcetfs.com, postmaster@morganstanleycryptoetf.com, postmaster@morganstanleybtcfund.com, postmaster@morganstanleycryptoetfs.com, postmaster@morganstanleybitcoinetfs.com, postmaster@morganstanleybtcetf.com.  Also on December 22, 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 January 14, 2021, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE:  IDENTITY THEFT

On December 22, 2020, the Forum received an email from Respondent stating that it does not own the disputed domain name. Respondent has not provided other evidence in support of an implied claim of stolen identity. Rule 1 defines “Respondent” as “the holder of a domain-name registration against which a complaint is initiated,” and Forum supplemental Rule 1D further defines the holder of a domain-name registration as “the single person or entity listed in the capital WHOIS registration information at the time of commencement.” The named Respondent herein meets these criteria, and the Panel shall proceed accordingly.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. 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 August 11, 1992). See Compl. Exhibit 6. Respondent’s <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY mark as they merely add the descriptive or generic terms “crypto,” “currencies,” “bitcoin” (or its abbreviation “btc”), “fund,” “etf,” and/or “etfs,” as well as the “.com” gTLD.

 

2.    Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by either the MORGAN STANLEY mark or the disputed domain names and Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain names. Also, Complainant never authorized Respondent to use the MORGAN STANLEY mark or the disputed domain names. Furthermore, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name <morganstanleycryptocurrencies.com> does not resolve to an active website and each of the remaining domain names resolves to a “parking” website, which contains links to third-party businesses offering financial services that compete with Complainant’s services.

 

3.    Respondent registered and uses the disputed domain names in bad faith. Respondent fails to make active use of the <morganstanleycryptocurrencies.com> domain name, and each of the remaining disputed domain names resolve to websites that provide links to commercial websites that offer competing services to Complainant’s services. Additionally, Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark as evidenced by the famous nature of Complainant’s mark. Finally, Respondent provided false WHOIS information when registering the disputed domain names. 

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark.

 

2.    Respondent does not have any rights or legitimate interests in the <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com> domain names.

 

3.    Respondent registered or used the <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com> domain names in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Respondent asserts rights in the MORGAN STANLEY mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,707,196, registered August 11, 1992). See Compl. Exhibit 6. 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).”). Therefore, the Panel finds Complainant has demonstrated rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY mark as they merely add the descriptive or generic terms “crypto,” “currencies,” “bitcoin” (or its abbreviation “btc”), “fund,” “etf,” and/or “etfs,” as well as the “.com” gTLD. Adding descriptive or generic words and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Complainant claims that the added terms all relate to Complainant’s business and notes that the terms “etf” and “etfs” are short for “electronic trading fund(s).” Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 contends Respondent lacks rights or legitimate interests in the <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com domain names as Respondent was not commonly known by either the MORGAN STANLEY mark or the disputed domain names, Respondent  did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain names, and Complainant never authorized Respondent to use the MORGAN STANLEY mark or the disputed domain names. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names 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 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 name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Stephen Thorpe /  vrtx agency,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the MORGAN STANLEY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent fails to make active use of the <morganstanleycryptocurrencies.com> while the other disputed domain names host competitive hyperlinks. Failing to use a disputed domain name or using a disputed domain name in connection with competitive hyperlinks 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 The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant provides a screenshot showing the <morganstanleycryptocurrencies.com> domain name does not resolve to an active website. See Compl. Exhibit 8. Complainant also provides screenshots highlighting that the remaining domain names resolve to “parking” websites, which contain links to third-party businesses offering financial services that compete with Complainant. See id.  The Panel therefore finds 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).

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and uses the <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com> , <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com domain names in bad faith as Respondent fails to make active use of the disputed domain name <morganstanleycryptocurrencies.com>, and each of the remaining disputed domain names resolve to a websites that provide links to commercial websites offering competing services to those of Complainant. Failing to use a disputed domain name or using a disputed domain name in connection with competitive hyperlinks can evidence bad faith registration and use per Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); 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 recalls Complainant provides screenshots highlighting that the <morganstanleycryptocurrencies.com> domain name does not resolve to an active website while the remaining domain names resolves to “parking” websites, which contain links to third-party businesses offering financial services that compete with Complainant’s services. See Compl. Exhibit 8. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).

 

Complainant further argues Respondent registered the disputed domain names with actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark based on the famous nature of the mark. Worldwide prominence of a mark can show a respondent had actual and constructive knowledge of the mark. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Here, Complainant argues Complainant’s mark is famous and provides Complainant’s company profile from Reuters and Tenet Partners’ brand report to highlight that fame. See Compl. Exhibits 3 & 5. The Panel agrees and finds Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <morganstanleycryptocurrencies.com>, <morganstanleybitcoinetf.com>, <morganstanleybtcetfs.com>, <morganstanleycryptoetf.com>, <morganstanleybtcfund.com>, <morganstanleycryptoetfs.com>, <morganstanleybitcoinetfs.com>, and <morganstanleybtcetf.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  January 27, 2021