Morgan Stanley and Eaton Vance Corp. v. Syed Hussain / Domain Management MIC
Claim Number: FA2105001944062
Complainant is Morgan Stanley and Eaton Vance Corp. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Syed Hussain / Domain Management MIC (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mseatonvance.com>, registered with Name.com, Inc.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2021; the Forum received payment on May 6, 2021.
On May 6, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <mseatonvance.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@mseatonvance.com.
Also on May 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity”.
The two Complainants in the present case, Morgan Stanley and Eaton Vance Corp., are closely related, as Morgan Stanley acquired Eaton Vance Corp. in 2020. Also, the Complainant’s argues that the disputed domain name incorporates both of Morgan Stanley and Eaton Vance Corp’s trademarks.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel will treat them both as a single entity (named as “the Complainant”) in this proceeding.
A. Complainant
The Complainant (Morgan Stanley and Eaton Vance Corp)., are both financial investment firms. Morgan Stanley closed on the acquisition of Eaton Vance Corp. in March 2021. Complainants both maintain their respective MORGAN STANLEY and EATON VANCE trademarks with the United States Patent and Trademark Office (USPTO). The disputed domain name, <mseatonvance.com>, is identical or confusingly similar to Complainant’s trademarks because it wholly incorporates Complainant’s EATON VANCE trademarks while abbreviating the MORGAN STANLEY trademark with the letters “M” and “S” adding it to the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <mseatonvance.com> domain name because Respondent is not commonly known by the <mseatonvance.com> domain name nor has Respondent received authorization from Complainant to use its trademarks. Additionally, Respondent is not using the <mseatonvance.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the <mseatonvance.com> domain name directing users to a parked page offering the <mseatonvance.com> domain name for sale. Respondent also creates confusion amongst users as to the <mseatonvance.com> domain name’s affiliation with Complainant.
Respondent registered and uses the <mseatonvance.com> domain name in bad faith because the <mseatonvance.com> domain name resolves to a parked webpage offering the domain name for sale. Respondent has also been engaged in a history of bad faith registration.
Further, Respondent registered the <mseatonvance.com> shortly after the announcement of Morgan Stanley’s acquisition of Eaton Vance Corp. Finally, Respondent acted with actual knowledge of Complainant’s rights in the MORGAN STANLEY and EATON VANCE trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,707,196 MORGAN STANLEY (word), registered August 11, 1992 for services in class 36;
No. 4,470,389 MORGAN STANLEY (word), registered January 21, 2014 for goods in classes 9 and 16;
No. 2,134,661 EATON VANCE (word), registered February 3, 1998 for services in class 36; and
No. 6,111,710 EATON VANCE (fig), registered July 28, 2020 for services in class 36.
The disputed domain name <mseatonvance.com> was registered on October 8, 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”).
The Complainant claims rights in the MORGAN STANLEY and EATON VANCE trademarks through their registration with the USPTO. Regsitration of a trademark with the USPTO is sufficient to show that a complainant has rights in that trademark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of registration in the MORGAN STANLEY and EATON VANCE trademarks (e.g. Reg. No. 1,707,196 for MORGAN STANLEY – registered on Aug. 11, 1992; and Reg. No. 2,134,661 for EATON VANCE – registered on Feb. 3, 1998). Therefore, the Panel finds that Respondent has rights in the MORGAN STANLEY and EATON VANCE trademarks under Policy ¶ 4(a)(i).
Complainant argues that the <mseatonvance.com> domain name is identical or confusingly similar to the trademarks because it wholly incorporates Complainant’s EATON VANCE trademark while adding in a common abbreviation of Complainant’s MORGAN STANLEY trademark and the “.com” generic top-level domain (“gTLD”). A domain name may be found identical or confusingly similar, under Policy ¶ 4(a)(i), where a common abbreviation of a complainant’s trademark is used. See 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). Complainant argues that “ms” as used in the <mseatonvance.com> domain name is an abbreviation of Complainant’s MORGAN STANLEY trademark.
Complainant lists in the Complaint several instances where “MS” is used to refer to Complainant including, but not limited to, “MS” as used as its symbol on the stock exchange for over twenty-five years, use of “MS” in other domain names owned by Complainant, and in the numerous results populated on the Google search engine when searching “MS”. These facts, especially in combination of the full trademark EATON VANCE in the disputed domain name, makes it clear that the full domain name is constructed in order to refer to both trademarks, and the Panel therefore finds that the <mseatonvance.com> domain name is at least confusingly similar under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent does not have any rights or legitimate interests in the <mseatonvance.com> domain name because Respondent is not commonly known by the <mseatonvance.com> domain name nor has received authorization from Complainant to use the MORGAN STANLEY or EATON VANCE trademarks. Evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found through identifying WHOIS information that is not relevant to the domain name and where a respondent did not obtain authorization by a complainant to use a complainant’s trademark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Complainant provides the WHOIS information for the <mseatonvance.com> domain name which does not display a name for the registrant. Complainant further argues that Respondent did not receive any authorization to use Complainant’s trademarks. Therefore, the Panel finds that Respondent is not commonly known by the <mseatonvance.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is not using the <mseatonvance.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent creates a confusion among users as to the <mseatonvance.com> domain name’s association with the Complainant. Use of a domain name incorporating a famous trademark that creates confusion among users as to the domain name’s association is evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Here, users are believed to be confused because the <mseatonvance.com> domain name utilizes a widely used abbreviation of the famous MORGAN STANLEY trademark and the trademark of another investment firm. Therefore, the Panel finds that Respondent is not using the <mseatonvance.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant finally argues Respondent lacks rights or legitimate interests in the <mseatonvance.com> domain name because Respondent is using the domain name as a parking page to offer the <mseatonvance.com> domain name for sale.
A general offer for sale may be evidence of a lack of rights and legitimate interests in a domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). On the resolving website, users are met with a message stating that the <mseatonvance.com> domain name is for sale for $1,099. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <mseatonvance.com> domain name.
The Complainant argues that Respondent registered and uses the <mseatonvance.com> domain name in bad faith because Respondent is offering the domain name for sale. A domain name’s offer for sale is an indication that a domain name was registered and used in bad faith under Policy ¶ 4(b)(i). As noted above, screenshots of the resolving page show that the <mseatonvance.com> domain name is being sold for $1,099. Therefore, the Panel clearly finds that Respondent registered and uses the <mseatonvance.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant secondly argues that Respondent registered and uses the <mseatonvance.com> domain name in bad faith because Respondent has a pattern of bad faith registration. A complainant’s showing of previous UDRP disputes where a respondent has been found to have previously registered and used domain names in bad faith may be used as evidence of bad faith registration and use in the current dispute, under Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains. “Of this list, 67 use the same email, support@domainp.net, as the Complainant.” A search at the Forum, http://www.adrforum.com/SearchDecisions, for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer (one was denied and one was withdrawn). Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(ii)”). Here, Complainant provides a list of twelve previous cases in which Respondent has been found to have registered and used previous domain names in bad faith. Therefore, the Panel finds that Respondent registered and uses the <mseatonvance.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant thirdly argues that Respondent registered and uses the <mseatonvance.com> domain name in bad faith because Respondent creates an initial interest confusion among users that the <mseatonvance.com> domain name is associated with the Complainant. Bad faith may be found where a domain name creates an initial interest confusion among users. 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). Users trying to access the <mseatonvance.com> domain name may be mistaken into believing that the <mseatonvance.com> domain name is associated with Complainant because Complainant has used “MS” in other domain names. Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant fourthly argues that Respondent registered and uses the <mseatonvance.com> domain name in opportunistic bad faith because Respondent registered the <mseatonvance.com> domain name shortly after the Morgan Stanley’s acquisition of Eaton Vance Corp. was announced. Registration of a disputed domain name in close temporal proximity to a complainant’s merger, acquisition, or other major business practices may be evidence of bad faith registration and use. See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (“The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”). Morgan Stanley announced in October 2020 that it was going to acquire Eaton Vance Corp. Respondent registered the <mseatonvance.com> domain name in October 2020 as well. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant finally argues that Respondent acted with actual knowledge of Complainant’s rights in the MORGAN STANLEY and EATON VANCE trademarks. Actual knowledge may be found where a respondent uses a well-known trademark of another. 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). In this case, Complainant has proved to be one of the most well-known investment firms, also outside the US. Therefore, the Panel finds that Respondent acted with actual knowledge of Complainant’s rights in the MORGAN STANLEY (including the well-used, but not registered MS version) and EATON VANCE trademarks thus acting in bad faith under 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 <mseatonvance.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforh, Panelist
Dated: June 21, 2021
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