Morgan Stanley v. Harry Guto
Claim Number: FA2012001925715
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Harry Guto (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleybonds.org>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2020; the Forum received payment on December 20, 2020.
On December 21, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <morganstanleybonds.org> 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 December 21, 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@morganstanleybonds.org. Also on December 21, 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 13, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 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).
2. Respondent’s <morganstanleybonds.org>[i] domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark as it merely adds the descriptive term “bonds” and the generic top-level domain (gTLD) “.org” to Complainant’s mark.
3. Respondent lacks rights or legitimate interests in the <morganstanleybonds.org> domain name. Respondent is not commonly known by either the MORGAN STANLEY mark or the domain name and Respondent does not actually engage in any business or commerce under the name MORGAN STANLEY or the domain name.
4. Furthermore, Complainant never authorized Respondent to use the MORGAN STANLEY mark or the <morganstanleybonds.org> domain name.
5. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name resolves to Complainant’s official website.
6. Respondent registered and uses the <morganstanleybonds.org> domain name in bad faith. Respondent uses the domain name to pass off as Complainant.
7. Additionally, Respondent registered the 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <morganstanleybonds.org> domain name and that Respondent registered and uses the 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”).
Respondent has 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). 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, Complainant has demonstrated rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <morganstanleybonds.org> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark as merely it merely adds the descriptive term “bonds” and the generic top-level domain (gTLD) “.org” to Complainant’s mark. Adding a descriptive word and a gTLD to a mark fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the <morganstanleybonds.org> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <morganstanleybonds.org> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <morganstanleybonds.org> domain name as Respondent is not commonly known by either the MORGAN STANLEY mark or the domain name. Respondent does not actually engage in any business or commerce under the name MORGAN STANLEY or the <morganstanleybonds.org> domain name, and Complainant never authorized Respondent to use the MORGAN STANLEY mark or the <morganstanleybonds.org> domain name. WHOIS information may be used to determine whether a respondent is commonly known by a 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 name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. 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 <morganstanleybonds.org> domain name lists the registrant as “Harry Guto,” and there is no other evidence in the record to suggest that Respondent is authorized to use the MORGAN STANLEY mark. Therefore, the Panel holds that Respondent is not commonly known by the <morganstanleybonds.org> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <morganstanleybonds.org> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name resolves to Complainant’s official website. A domain name incorporating the mark of a complainant without consent, resolving to a complainant’s website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Complainant provides a screenshot showing that the <morganstanleybonds.org> domain name resolves to Complainant’s official website. 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <morganstanleybonds.org> domain name in bad faith as Respondent passes off as Complainant as the domain name resolves to Complainant’s official website. A domain name incorporating a complainant’s mark resolving to a complainant’s website can evidence bad faith registration and use per Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). The record includes a screenshot of Complainant’s official website resolving from the <morganstanleybonds.org> domain name. The Panel holds that Respondent registered and uses the <morganstanleybonds.org> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant further argues Respondent registered the <morganstanleybonds.org> domain name with actual 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 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). The Panel holds that Respondent had actual knowledge of the MORGAN STANLEY mark when Respondent registered the <morganstanleybonds.org> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <morganstanleybonds.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 25, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page