Morgan Stanley v. Dari Darling
Claim Number: FA2109001965150
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Dari Darling (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tier2mydeskmorganstanley.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 24, 2021; the Forum received payment on September 24, 2021.
On September 27, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tier2mydeskmorganstanley.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@tier2mydeskmorganstanley.com. Also on September 27, 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 October 25, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Morgan Stanley, offers a range of financial services. Complainant has rights in the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 1,707,196, registered Aug. 11, 1992). Respondent’s <tier2mydeskmorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because it incorporates the entire mark, removing spaces, and adding the descriptive terms “Tier2” and “MyDesk” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <tier2mydeskmorganstanley.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or licensed to use Complainant’s MORGAN STANLEY mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain is inactive. Furthermore, based on the fame of the MORGAN STANLEY mark Respondent likely chose the disputed domain name to create an impression of association with Complainant.
Respondent registered and uses the <tier2mydeskmorganstanley.com> domain name in bad faith. First, Respondent uses the disputed domain name to create initial interest confusion, distracting customers who attempt to find the complainant’s subdomain. Second, Respondent had constructive and/or actual notice of Complainant’s rights in the MORGAN STANLEY mark given the mark’s fame and the complainant’s registration of the mark with the USPTO. Finally, Respondent’s inactive holding is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <tier2mydeskmorganstanley.com> domain name.
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 argues that Respondent’s <tier2mydeskmorganstanley.com> domain name is confusingly similar to its MORGAN STANLEY mark because it incorporates the entire mark, merely eliminating spaces and adding the descriptive terms “Tier2” and “MyDesk” and the “.com” gTLD. Eliminating spaces between working in a mark and adding descriptive words and a gTLD to a mark does not sufficiently distinguish a disputed domain name. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Additionally, Complainant notes that the addition of the terms “Tier2” and “MyDesk” are particularily confusing as Complainant uses the subdomain <tier2.mydesk.morganstanley.com>. The Panel finds that the disputed domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”). The Panel finds that Complainant has made a prima facie case.
Complainant claims Respondent does not have rights or legitimate interests in the <tier2mydeskmorganstanley.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or licensed to use Complainant’s MORGAN STANLEY mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may further demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies “Dari Darling” as the registrant and no information suggests Complainant authorized Respondent to use the MORGAN STANLEY mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent’s domain name resolves to an inactive website and Respondent likely chose the domain to create an impression of association with Complainant. Inactively holding a disputed domain name does not demonstrate a legitimate or noncommercial fair use or a bona fide offering of goods or services. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Likewise, use of a disputed domain name incorporating a famous mark in order to suggest an affiliation with a complainant also does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Amazon Technologies, Inc. v. Hari Kishan / Amazon Web Solution, FA 1726257 (Forum May 15, 2017) (“It does not make it clear that there is no commercial connection with Complainant, whose use of the famous mark AMAZON, preceded Respondent’s use. This use is confusing. As such it cannot amount to the bona fide offering of goods and services.”). Complainant provides a screenshot showing the disputed domain name resolves to an error message. The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent creates initial interest confusion. Causing initial interest confusion through registration and use of a disputed domain name which is essentially identical to a complainant’s domain and mark is evidence of bad faith. 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). The disputed domain name is essentially identical to Complainant’s subdomain name <tier2.mydesk.morganstanley.com>. Complainant contends that the similarity between the two domain names creates initial interest confusion distracting customers who are trying to access Complainant’s legitimate domain name. The Panel finds this is evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the MORGAN STANLEY mark prior to registration of the disputed domain name because of Complainant’s widespread use of the mark and its trademark registrations with the USPTO. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that since its mark is well-known throughout the financial industry, Respondent must have had knowledge of Complainant’s rights in the mark. The Panel finds Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark which is evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondents inactive holding of the disputed domain name is further evidence of bad faith registration and use. Under Policy ¶ 4(a)(iii), failure to resolve a disputed domain name to an active website indicates bad faith. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides a screenshot showing the disputed domain name resolves to an error message. This is evidence of bad faith under Policy ¶ 4(a)(iii) and the Panel finds that Respondent registered and uses the domain name in bad faith.
Complainant has proved this element.
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 <tier2mydeskmorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
October 27, 2021
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