Morgan Stanley v. Enrique Gutierrez / Find My Parent
Claim Number: FA2203001986437
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Enrique Gutierrez / Find My Parent (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com>, registered with Amazon Registrar, Inc..
PANEL
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 March 1, 2022. The Forum received payment on March 1, 2022.
On March 2, 2022, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names are registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the names. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 March 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2022 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@mitsubishimufjmorganstanley.com, postmaster@mufjmorganstanley.com. Also on March 3, 2022, 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 March 29, 2022, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. With over 1,000 offices in over 40 countries, and over 55,000 employees worldwide, including in Japan, Complainant offers truly global access to financial markets and advice.
In or about 2010, Complainant entered into several join ventures with the Japanese firm Mitsubishi UFJ Financial Group (“MUFJ”), including Mitsubishi UFJ Morgan Stanley Securities.
Complainant has rights in the MORGAN STANLEY mark through numerous registrations, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names are virtually identical and confusingly similar to Complainant’s mark, which is famous.
Respondent lacks rights and legitimate interests in the <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the domain names. Respondent does not use the domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the domain names.
Respondent registered and uses the <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names in bad faith. Respondent inactively holds the domain names. Respondent registered the domain names with knowledge of Complainant’s rights in the MORGAN STANLEY mark.
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 has shown that it has rights in the MORGAN STANLEY mark through worldwide registrations, including with the USPTO (e.g. Reg. No. 1,707,196, registered August 11, 1992). The Panel finds Respondent’s <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names to be confusingly similar to the MORGAN STANLEY mark becase they incorporate the mark in its entirety. The addition of the term “mufj,” an abbreviation for Mitsubishi UFJ, in both domain names and the addition of the term “Mitsubishi” in one of the domain names do not obviate the confusing similarity. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(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 <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names were registered on February 12, 2022, many years after Complainant has shown that its MORGAN STANLEY mark had become famous worldwide and many years after Complainant entered into its Mitsubishi UFJ Morgan Stanley Securities join venture with Mitsubishi UFJ Financial Group. The domain names do not resolve to active websites.
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 names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
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
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous MORGAN STANLEY mark and its Mitsubishi UFJ Morgan Stanley Securities joint venture with Mitsubishi UFJ Financial Group (“MUFJ”) when Respondent registered the <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names and that Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii).
Further, as in Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015), the Panel finds Complainant’s MORGAN STANLEY mark is so well-known that the only plausible inference that can be derived from Respondent’s registration of the <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names is that Respondent registered the domain names in bad faith to take advantage of and intentionally trade on the goodwill associated with Complainant’s mark.
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 <mitsubishimufjmorganstanley.com> and <mufjmorganstanley.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 30, 2022
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