Morgan Stanley v. david baker
Claim Number: FA2108001958414
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is david baker (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgan-stanley-au.com>, registered with Squarespace Domains 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2021. The Forum received payment on August 6, 2021.
On August 10, 2021, Squarespace Domains LLC confirmed by e-mail to the Forum that the <morgan-stanley-au.com> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains 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 August 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@morgan-stanley-au.com. Also on August 11, 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 September 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 provides multinational financial, investment and wealth management services. Complainant has rights in the MORGAN STANLEY mark, with multiple variations, based on registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <morgan-stanley-au.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark.
Respondent has no rights or legitimate interests in the <morgan-stanley-au.com> domain name. Complainant has not authorized or licensed Respondent to use the MORGAN STANLEY marks, nor is Respondent commonly known by the domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the domain name resolves to an inactive webpage.
Respondent registered the <morgan-stanley-au.com> domain name in bad faith with actual knowledge of Complainant’s rights in the MORGAN STANLEY marks. Respondent uses the domain name in bad faith to confuse users and disrupt Complainant’s business. The domain name resolves to an inactive “under construction” webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the MORGAN STANLEY mark, with multiple variations, based on registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered on Aug. 11, 1992). The Panel finds Respondent’s <morgan-stanley-au.com> domain name to be confusingly similar to Complainant’s MORGAN STANLEY mark, as it incorporates Complainant’s mark in its entirety and merely adds hyphens and “au”, the geographic abbreviation for Australia, which do not distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (gTLD), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <morgan-stanley-au.com> domain name was registered on August 4, 2021, long after Complainant has shown that its MORGAN STANLEY mark had become famous worldwide. It resolves to an inactive webpage displaying the domain name and stating that it is “under construction”.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
As in Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015):
“Complainant’s MORGAN STANLEY marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain names is that Respondent registered the disputed domain names to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks.”
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The circumstances set out in relation to the second element satisfy the Panel that Respondent registered the domain name in bad faith while fully aware of Complainant’s famous MORGAN STANLEY mark.
The <morgan-stanley-au.com> domain name does not resolve to an active website. However, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), there is no conceivable active use that could be made of the domain name that would not amount to an infringement of Complainant’s rights. Accordingly, the Panel finds that Respondent’s passive use of the domain name constitutes use in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morgan-stanley-au.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: September 3, 2021
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