Morgan Stanley v. Matt Grant
Claim Number: FA2102001933257
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Matt Grant (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleycurrency.online> and <morganstanleycurrency.com>, registered with Dreamscape Networks International Pte Ltd.
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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2021; the Forum received payment on February 23, 2021.
On February 25, 2021, Dreamscape Networks International Pte Ltd confirmed by e-mail to the Forum that the <morganstanleycurrency.online> and <morganstanleycurrency.com> domain names are registered with Dreamscape Networks International Pte Ltd and that Respondent is the current registrant of the names. Dreamscape Networks International Pte Ltd has verified that Respondent is bound by the Dreamscape Networks International Pte Ltd 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 March 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 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@morganstanleycurrency.online, postmaster@morganstanleycurrency.com. Also on March 1, 2021, 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.
A timely Response was received and determined to be complete on March 21, 2021.
On March 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the MORGAN STANLEY family of marks related to financial and wealth management services, in use by Complainant since 1935.
Complainant claims that its MORGAN STANLEY marks, in addition to being registered by Complainant in several jurisdictions, are considered to be well-known marks. Complainant also claims to be the owner of domain name MORGANSTANLEY.COM since 1996, as well as thousands of variations thereof across a broad spectrum of gTLDs and ccTLDs.
Complainant claims that the disputed domain names are virtually identical and confusingly similar to its MORGAN STANLEY registered marks, considering that the disputed domain names incorporate the MORGAN STANLEY’s marks in their entirety as well as that the addition of the descriptive term “currency” would only enhance the confusingly similarity between its MORGAN STANLEY’s mark and the disputed domain names.
Complainant also claims that the addition of the gTLDs and elimination of spaces fail to obviate the confusing similarity.
Furthermore, Complainant claims that Respondent lacks rights or legitimate interests in the disputed domain names considering that MORGAN STANLEY nor the disputed domain names would be Respondent’s actual name, nor that Respondent would be engaged in any business or commerce under the name MORGAN STANLEY or the disputed domain names. In this sense, Complainant claims that Respondent would not commonly known by either the MORGAN STANLEY mark or the disputed domain names.
In addition, Complainant affirms that it has never authorized Respondent to use the MORGAN STANLEY mark or the disputed domain names.
Additionally, Complainant claims 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 has not made any active use of the domain name and that Respondent’s passive holding of the domain name does not show a legitimate use or bona fide offering of goods or services.
Lastly, Complainant argues that Respondent has registered and uses the disputed domain names in bad faith considering that Complainant’s MORGAN STANLEY marks are so well-known that Respondent’s registration of the domain names is presumed to have happened with constructive knowledge of Complainant’s prior marks. In this sense, Respondent would have registered the disputed domain names to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. Moreover, Respondent’s failure to make active use of the disputed domain names is further evidence of bad faith use and registration, according to Complainant.
B. Respondent
Respondent argues that it has recently purchased the <morganstanleycurrency.com> domain name with intent to use it and that Respondent has spent a lot of money on its plans.
Respondent informs that it has no intention to pass off as someone else and asserts “it will be made very clear who [Respondent is].”
Respondent also contends that it has recently been approached by someone looking to purchase the <morganstanleycurrency.com> domain name for $14 million USD in cryptocurrency.
Lastly, Respondent informs that it has no current intention to sell the <morganstanleycurrency.com> domain name. However, Respondent further argues that he would not oppose to discuss the purchase of the domain name with Complainant.
Complainant is the world-famous American investment bank that provides financial, investment, and wealth management services, with offices in several locations across the world.
Complainant owns trademark registrations for the MORGAN STANLEY marks for financial services and related goods and services since 1992 (U.S. Reg. 1707196 and 4470389), as per Annex 06.
According to the WHOIS information, the <morganstanleycurrency.online> and <morganstanleycurrency.com> domain names were both registered on February 14, 2021, as provided by Annex 07.
The <morganstanleycurrency.online> domain name does not currently redirect to any active websites and the <morganstanleycurrency.com> domain name redirects to a registrar parking page, as provided by Annex 08, which cannot be considered active use of the domain either.
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.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark and 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 Complainant owns rights related to the MORGAN STANLEY mark as per registration of the mark with the USPTO (e.g., Reg. No. 1,707,196 and 4,470,389, registered August 11, 1992 and January 21, 2014, respectively) as per Annex 06.
In this sense, the Panel finds that the disputed domain names are confusingly similar to Complainant’s registered MORGAN STANLEY mark, as both the disputed domain names wholly reproduce the MORGAN STANLEY mark in its entirety with the mere addition of the expression “currency”, which is not sufficient to prevent the similarity and possibility of confusion of the disputed domain name with Complainant’ s MORGAN STANLEY mark, rather just enhances such possibility as “currency” is an expression directly related to Complainant’s main activity in the segment of financial services. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”), see also 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).
Moreover, the addition of “.online” and “.com” gTLDs in the <morganstanleycurrency.online> and <morganstanleycurrency.com> domain names, respectively, and the elimination of spaces also do not prevent the disputed domain names from being confusingly similar to the Complainant’s MORGAN STANLEY registered mark pursuant to the Policy. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”).
The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
Considering the documents attached to the file (and lack thereof) as well as Respondent’s response to Complainant’s contentions, the Panel finds that Respondent does not own any rights or legitimate interests in the disputed domain name.
In this regard, it is important to emphasize that the burden of proof lies with Respondent, as Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See 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 was able to evidence it owns prior rights in the MORGAN STANLEY marks (Annex 06). Moreover, Complainant affirms, uncontested by Respondent, that it has not licensed nor authorized Respondent to make use nor register the MORGAN STANLEY marks.
In addition, Respondent is not commonly known by the disputed domain name, and, in spite of the fact that Respondent has affirmed that it had purchased the <morganstanleycurrency.com> domain name with intent to use it, Respondent has not provided any documents/evidence to support said allegation.
Therefore, Respondent has failed to evidence rights and legitimate interests in the disputed domain names.
Moreover, from the evidence attached to the complaint (Annex 08), 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 <morganstanleycurrency.online> domain name does not currently redirect to any active websites and the <morganstanleycurrency.com> domain name redirects to a registrar parking page, which cannot be considered active use of the domain either, see Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
In this sense, the Panel finds that Complainant has satisfied Policy 4(a)(ii).
In order to facilitate assessment of whether the bad-faith element is established, paragraph 4(b) of the Policy provides the following non-exclusive scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In light of the above and considering the Complainant’s allegations, the Panel understands that there are no indicative elements of any of the circumstances described above.
However, considering that the listed scenarios are non-exclusive and merely illustrative, and that the Complainant was able to prove (i) it holds prior rights in the MORGAN STANLEY mark, considered well-known by previous panels, see Morgan Stanley v. jorge Stephan, FA 1219168 (Forum Sept. 12, 2008); Morgan Stanley v. Meow, FA 671304 (Forum May 22, 2006); Morgan Stanley v. Albert Jackson, FA 244092 (Forum Apr. 19, 2004 and Morgan Stanley v. Morgan Stanley Latin America, LLC, DRS 3070 (Nominet Dec. 15, 2005); (ii) the disputed domain names reproduce the MORGAN STANLEY mark in their entirety; (iii) Respondent failed to evidence any rights or legitimate interests in the disputed domain names and (iv) the “passive holding” of the disputed domain names; collectively amount to bad faith, is that the Panel finds that the third element has been established.
The disputed domain names reproduce Complainant’s MORGAN STANLEY registered and well-known marks in their entirety, with the mere addition of the descriptive expression “currency”, which not only is insufficient to prevent an undue association with Complainant’s marks but also contributes to the undue association, considering that said expression is directly associated with Complainant’s services under the MORGAN STANLEY mark.
In this sense, the Panel understands that Respondent has registered and uses the disputed domain names to create initial interest or confusion by Internet users, which amounts to bad faith under Policy ¶ 4(a)(iii). 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); see also Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”).
Moreover, the fact that Complainant’s MORGAN STANLEY marks are considered to be well-known given its history, international presence, and success (evidenced by Annexes 02,03 and 04), the Panel infers that Respondent has registered the disputed domain names in order to obtain undue advantage of the goodwill associated with the MORGAN STANLEY registered mark, which also amounts to bad faith per Policy ¶ 4(a)(iii).
Lastly, the fact that the disputed domain names are not being used by Respondent, incurring the Respondent in passive holding, is that such situation also supports the finding for bad faith in registration and use of the disputed domain names.
In regard to the doctrine of “passive holding”, from the inception of the UDRP, previous panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In this case, the Panel is also convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith.
Such circumstances include the renown of the Complainants’ MORGAN STANLEY mark; Respondent’s failure to evidence rights or legitimate interests in the disputed domain names and that the disputed domain names reproduce the MORGAN STANLEY mark in their entirety with the addition of the expression “currency” which enhances the association of said domain names with Complainant’s prior and well-known mark.
The Panel accordingly reaches the conclusion that the passive holding of the disputed domain name amounts to use in bad faith given the circumstances of the case.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleycurrency.online> and <morganstanleycurrency.com> domain names be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist.
Dated: April 8, 2021
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