Morgan Stanley v. Shintaro Shimizu / Seculia, Inc.
Claim Number: FA2109001966447
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Shintaro Shimizu / Seculia, Inc. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleymufj.com>, registered with CloudFlare, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2021; the Forum received payment on September 27, 2021.
On September 28, 2021, CloudFlare, Inc. confirmed by e-mail to the Forum that the <morganstanleymufj.com> domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, 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 September 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@morganstanleymufj.com. Also on September 29, 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 The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Morgan Stanley, operates a full-service financial institution with over $48 billion in revenue in 2020. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Respondent’s <morganstanleymufj.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark, merely omitting the space from the mark, adding the letters “MUFJ” as an abbreviation for one of Complainant’s business partners, Mitsubishi UFJ Financial Group, and adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <morganstanleymufj.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MORGAN STANLEY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host an inactive website.
Respondent registered and uses the <morganstanleymufj.com> domain name in bad faith. Respondent fails to make any active use of the disputed domain name, instead allowing it to remain inactive, which demonstrates bad faith. Additionally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a full-service financial institution with over $48 billion in revenue in 2020.
2. Complainant has established its trademark rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,707,196, registered Aug. 11, 1992).
3. Respondent registered the disputed domain name on June 16, 2010.
4. Respondent has caused the disputed domain name to be used to host an inactive website.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MORGAN STANLEY mark through its registration of the mark with the USPTO. Registration of a mark with a national trademark agency, such as the USTPO, is generally sufficient to demonstrate rights in a mark 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 evidence of its registration with the USPTO (e.g., Reg. 1,707,196, registered Aug. 11,1992). See Compl. Ex. 6. Therefore, the Panel finds Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant argues that Respondent’s <morganstanleymufj.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark, only differing by omitting the space within the mark and adding the letters “MUFJ” as an abbreviation for Mitsubishi UFJ Financial Group, one of Complainant’s business partners, and adding the “.com” gTLD. Prior Panels have held such changes to be insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see also KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”). Thus, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY trademark and to use it in its domain name in its entirety; adding the letters “MUFJ” as an abbreviation for one of Complainant’s business partners, Mitsubishi UFJ Financial Group;
(b) Respondent registered the disputed domain name on June 16, 2010;
(c) Respondent has caused the disputed domain name to be used to host an inactive website;
(d) Respondent has engaged in this activity without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <morganstanleymufj.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MORGAN STANLEY mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a 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). Here, the WHOIS information of record identifies “Shintaro Shimizu / Seculia, Inc.” as the registrant of the disputed domain name. See Compl. Ex. 7; see also registrar verification email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent fails to use the <morganstanleymufj.com> domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to host an inactive website. Failure to make active use of a disputed domain name does not qualify as either a bona fide offer or as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). 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).”). Complainant provides screenshots of the use of the disputed domain name, which resolves to a generic error webpage, as proof of Respondent’s inactive holding. See Compl. Ex. 8. The Panel thus finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First ,the Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Secondly, Complainant argues that Respondent registered and uses the disputed <morganstanleymufj.com> domain name in bad faith as it uses the disputed domain name to host an inactive website. Previous Panels have held that failure to make active use of an infringing domain name may display bad faith under Policy ¶ 4(a)(iii). 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.”). As previously noted, Complainant provides screenshots of the disputed domain name’s resolving web page as evidence of Respondent’s inactive holding. See Compl. Ex. 8. Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent registered the <morganstanleymufj.com> domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith and can be demonstrated by the notoriety of a mark and the use Respondent makes of the disputed domain name. See 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).”). Here, Complainant operates a full-service financial institution with over $48 billion in revenue last year, and Respondent registered a domain name involving Complainant’s mark and an abbreviation for one of Complainant’s business partners. As the Panel agrees that actual knowledge was present, it finds bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MORGAN STANLEY mark and in view of the conduct of Respondent in using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleymufj.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 26, 2021
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