Morgan Stanley v. mike holly
Claim Number: FA2109001966717
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is mike holly (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstenley.com>, registered with GoDaddy.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2021; the Forum received payment on September 28, 2021.
On September 29, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstenley.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 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@morganstenley.com. Also on September 30, 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 James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the MORGAN STANLEY mark established by its ownership of the portfolio of trademark registrations described below and extensive use of the mark by itself and its affiliates in the provision of financial services having over 1000 offices in over 40 countries and 55,000 employees worldwide with net revenues of over US$ 48,000,000,000 in 2020.
Complainant submits that the disputed domain name <morganstenley.com> is almost identical and confusingly similar to its MORGAN STANLEY mark, arguing that the disputed domain name uses a misspelling of Complainant’s MORGAN STANLEY mark, replacing the letter “a” in STANLEY with an “e”, which does not obviate the confusing similarity between the disputed domain name and Complainant’s marks. See Morgan Stanley v. Above.com Domain Privacy, FA 1366174 (Forum Feb. 14, 2011) (omission of letter “m” from complainant’s MORGAN STANLEY mark did not obviate confusion from domain name ORGANSTANLEYCLIENTSERV.COM).
It is contended that is well settled that a domain name that is a common mistyping or misspelling of a mark is confusingly similar to that mark. See Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding BELKEN.COM domain name confusingly similar to complainant’s BELKIN mark because name merely replaced letter “I” in complainant’s mark with letter “E”).
Complainant also argues that “[t]he addition of the gTLD .space (sic) and the elimination of spaces fail to obviate the confusing similarity”. In the context of the generality of the submissions, this Panel understands this to be a typo and that the “gTLD <.com>” is intended.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that upon information and belief, neither MORGAN STANLEY nor the disputed domain name are part of Respondent’s actual name.
Additionally, upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Respondent was not commonly known by those names. See Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name).
Complainant adds that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY mark or the disputed domain name. Indeed, Respondent has no relationship whatsoever to Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Complainant further argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. As shown in the screen capture of the notice to which the disputed domain name resolves which has been adduced in evidence in an annex to the Complaint, the disputed domain name does not resolve to an active website. The passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services. See Teachers Ins. And Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15,2006) (“passive holding of a domain name does not constitute ‘legitimate noncommercial or fair use’”).
Complainant also contends that Respondent’s typosquatting (i.e., intentional misspelling) of Complainant’s MORGAN STANLEY mark is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that respondent lacked rights and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access complainant’s INDYMAC.COM website but mistakenly misspell complainant’s mark by typing the letter “x” instead of the letter ‘c’”).
Complainant then argues that the disputed domain name was registered and is being used in bad faith.
Complainant contends that It is clearly is more than a coincidence that Respondent chose and registered the disputed domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant has a long and well-established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he or she chose and registered the disputed domain name, and in fact chose the disputed domain name because it was confusingly similar to Complainant’s well-known marks and Respondent intended to capitalize on that confusion. Complainant argues that this alone constitutes evidence of bad faith use and registration of a domain. See Disney Enters., Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM).
Complainant adds that Respondent’s failure to make active use of the disputed domain name is further evidence of bad faith use and registration. See Kohl's Illinois, Inc. v. c/o kphls.com; c/o kohals.com; c/o kohlsdepartmentstore.com; c/o khols.com, FA 1442950 (Forum June 7, 2012) (“Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under Policy ¶ 4(a)(iii)”).
Complainant further contends that Respondent has used a common misspelling of Complainant’s MORGAN STANLEY mark is further evidence of prior knowledge of Complainant’s mark and Respondent’s bad faith use and registration. Complainant argues that such “typosquatting” improperly targets Internet users who commit typographical errors and is strong evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”).
In conclusion Complainant argues that by causing initial interest confusion, Respondent’s use and registration of the disputed domain name disrupts the business of Complainant, which is additional evidence of bad faith use and registration. See Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion); and finally argues that because Complainant’s marks are well known and registered in many countries throughout the world, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time he or she registered the confusingly similar domain name. This knowledge indicates Respondent’s bad faith use and registration. See Carnival Plc v. Belize Domain WHOIS Service Lt, FA 997973 (Forum July 17, 2007) (constructive knowledge of mark due to federal registration is evidence of bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and its affiliates are engaged in the provision of financial services in jurisdictions across the world, using the MORGAN STANLEY mark for which Complainant holds an international portfolio of trademark and service mark registrations including the following for which it has adduced in evidence copies of its certificates of registration:
· United States registered service mark MORGAN STANLEY, registration number 1707196 registered on the Principal Register on August 11, 1992 for services in international class 36; and
· United States registered trademark MORGAN STANLEY, registration number 4470389, registered on the Principal Register on January 21, 2014 for goods in international classes 9 and 16.
Complainant has an established Internet presence with a large portfolio holding and using the Internet domain name <morganstanley.com> and variations thereof across a broad spectrum of gTLDs and ccTLDs.
The disputed domain name <morganstenley.com> was registered on August 16, 2021 and is inactive.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request from the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
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 has provided clear, convincing and uncontested evidence of its rights in the MORGAN STANLEY trademark and service mark established by the portfolio of trademark registrations described above and use of the mark by itself and its affiliates in the provision of financial services having over 1000 offices in over 40 countries and 55,000 employees worldwide with net revenues of over US$ 48,000,000,000 in 2020.
The disputed domain name <morganstenley.com> is almost identical to the MORGAN STANLEY mark as it merely substitutes the letter “e” for the letter “a” in the mark. The first part of the mark and domain name “MORGAN” remains identical and Complainant’s MORGAN STANLEY trademark is clearly recognizable within the disputed domain name.
There are no other elements in the disputed domain name, except for the gTLD <.com> extension which would be considered by Internet users to be a necessary technical element of a domain name in the circumstances of this proceeding.
This Panel finds therefore that the disputed domain name is confusingly similar to the MORGAN STANLEY mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· upon information and belief, neither MORGAN STANLEY nor the disputed domain name are part of Respondent’s actual name;
· also upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name;
· Respondent was not commonly known by those names;
· Respondent not a licensee of Complainant;
· Respondent has never been authorized by Complainant to register or use the MORGAN STANLEY mark or the disputed domain name;
· Respondent has no relationship whatsoever to Complainant;
· Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use as shown in the screen capture of the notice to which the disputed domain name resolves which has been adduced in evidence in an annex to the Complaint, the disputed domain name does not resolve to an active website;
· the passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services;
· Respondent’s typosquatting (i.e., intentional misspelling) of Complainant’s MORGAN STANLEY mark by substituting the letter “e” for the “a”.
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove the existence of such rights or legitimate interests.
Respondent has failed to discharge the burden of production and so this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test under Policy ¶ 4(a)(ii).
This Panel must accept that, as argued by Complainant, it is clearly is more than a coincidence that Respondent registered the disputed domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks.
The disputed domain name was clearly chosen as an intentional misspelling of the mark in which Complainant has a long and well-established international reputation. There is nothing to suggest that the disputed domain name has any meaning or significance other than as a reference to Complainant’s name and mark. It is almost identical to Complainant’s own domain name <morganstanley.com> which it’s the address of its principal website.
In these circumstances this Panel must find that on the balance of probabilities the disputed domain name was registered in bad faith in order to take predatory advantage of Complainant’s reputation and goodwill in the MORGAN STANLEY mark in order to confuse and misdirect Internet users.
The evidence shows that the disputed domain is being passively held by Respondent.
In the circumstances of this case where the disputed domain name is clearly an exercise in typosquatting, where the disputed domain name is almost identical to the MORGAN STANLEY mark, where on the balance of probabilities the disputed domain name has an almost imperceptible substitution of one vowel in the “STANLEY” element of the domain name, and Respondent is concealing his identity on the published WhoIs by use of a privacy service, this Panel finds on the balance of probabilities that such passive holding amounts to bad faith use of the disputed domain name for the purposes of Policy
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstenley.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 27, 2021
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