Morgan Stanley v. Joseph Heard / Eula Fox
Claim Number: FA2207002005856
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Joseph Heard / Eula Fox (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cp-morganstanley.com> and <noreply-morganstanley.com>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2022; the Forum received payment on July 27, 2022.
On July 28, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <cp-morganstanley.com> and <noreply-morganstanley.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@cp-morganstanley.com, postmaster@noreply-morganstanley.com. Also on August 1, 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 August 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute are similarly constructed as each domain name prefixes a term followed by a hyphen to the MORGAN STANLEY mark and concludes with “.com.” Each domain is held passively. Further, the domain names were registered on the same date.
While it is possible that the underlying registrants may or may not differ nominally, they clearly appear to be related to, or controlled by, the same person, persons, or entity. Notably, Complainant’s contention that the domain names’ registrants be treated as a single entity in the instant proceeding is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding and collectively are referred to as Respondent.
A. Complainant
Complainant contends as follows:
Complainant is a New York-based global financial services provider.
Complainant claims rights in the MORGAN STANLEY mark through registration with the United States Patent and Trademark Office (“USPTO”).
The <cp-morganstanley.com> and <noreply-morganstanley.com> domain names are identical or confusingly similar because they wholly incorporate Complainant’s registered mark and differ only through the addition of the generic or descriptive terms “cp” or “noreply” as well as a hyphen, removal of a space, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <cp-morganstanley.com> and <noreply-morganstanley.com> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized Respondent to use the MORGAN STANLEY mark in any way. Additionally, Respondent fails to use the at-issue domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the domain names.
Respondent registered and uses the <cp-morganstanley.com> and <noreply-morganstanley.com> domain names in bad faith. Respondent’s use of the domain name disrupts Complainant’s business. Additionally, Respondent capitalizes on the confusing similarity between the domain names and the mark. Furthermore, the at-issue domain names resolve to an inactive webpage. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MORGAN STANLEY trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the MORGAN STANLEY trademark.
Respondent holds the at-issue domain names passively.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO trademark registration for its MORGAN STANLEY trademark. Respondent’s national trademark registration, as well as any of its national registrations worldwide, is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also, Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <cp-morganstanley.com> and <noreply-morganstanley.com> domain names each contain Complainant’s MORGAN STANLEY trademark less its domain name impermissible space; both domain names are prefixed by a term, either “cp” or “noreply,” and a hyphen. Both domain names conclude with the “.com” top-level domain name. The differences between either of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either at-issue domain name from Complainant’s MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <cp-morganstanley.com> and <noreply-morganstanley.com> domain names are each confusingly similar to Complainant’s MORGAN STANLEY mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names does not identify their registrant by a name that is suggestive of either at-issue domain name and the record before the Panel contains no evidence that tends to prove that their registrant is commonly known by one (or both) of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either <cp-morganstanley.com> or <noreply-morganstanley.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <cp-morganstanley.com> and <noreply-morganstanley.com> domain names are each inactive. Respondent’s domain names each fail to address an active webpage as browsing to either domain name returns a system error message indicating that a site cannot be reached. Respondent’s passive holding of the at-issue domain names shows that neither domain name promotes a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent holds each at-issue domain name passively. Respondent’s passive holding of the confusingly similar at-issue domain names indicates Respondent’s bad faith registration and use of such domain names under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Next, Respondent’s use of the domain name may be characterized as an effort by Respondent to misdirect internet users seeking Complainant to an inactive webpage. Such use disrupts Complainant’s business and shows Respondent’s intent to take advantage the confusion it created between its domain name and Complainant’s mark. Notably, such use is indicative of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).); see also, Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark when it registered <cp-morganstanley.com> and <noreply-morganstanley.com> as domain names. Respondent’s actual knowledge is evident given the worldwide notoriety of Complainant and its trademark as well as from Respondent’s registration of multiple domain names incorporating Complainant’s trademark. Respondent’s registration of two confusingly similar domain names with knowledge of Complainant’s trademark rights therein further shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cp-morganstanley.com> and <noreply-morganstanley.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 26, 2022
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