Morgan Stanley v. Misa Damjanic
Claim Number: FA2301002026648
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Misa Damjanic (“Respondent”), CA, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyafs.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 6, 2023; Forum received payment on January 6, 2023.
On January 9, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <morganstanleyafs.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 January 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2023 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@morganstanleyafs.com. Also on January 10, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 contends as follows:
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.
Complainant asserts rights in the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
The <morganstanleyafs.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark because it merely adds the descriptive term “AFS”, the generic top level domain (“gTLD”) “.com”, and eliminates all spaces.
Complainant asserts Respondent has no rights or legitimate interests in the at-issue domain name. Respondent is not commonly known by the <morganstanleyafs.com> domain name. Respondent is not using the at-issue domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Instead, Respondent is passing off as Complainant. Respondent is trading on the fame of Complainant’s mark.
Respondent registered and uses the <morganstanleyafs.com> domain name in bad faith. Respondent is causing initial interest confusion and disrupting Complainant’s business. Respondent is taking advantage of the goodwill associated with the Complainant’s mark. Respondent is attempting to pass itself off as Complainant. Additionally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the MORGAN STANLEY mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in MORGAN STANLEY.
Respondent uses the at-issue domain to address a webpage of Complainant’s genuine website to pass itself off as Complainant.
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 is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of MORGAN STANLEY is sufficient to establish Complainant’s rights in such mark for the purposes of 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.”).
The at-issue domain name contains Complainant’s entire M ORGAN STANLEY trademark less its space followed by the letters “afs” – an abbreviation for “American Financial Systems” – and with all followed by the “.com” top level domain name. The differences between the <morganstanleyafs.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from the trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <morganstanleyafs.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); 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). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the 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 Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for <morganstanleyafs.com> indicates that “Misa Damjanic” is its registrant and there is no evidence in the record indicating that Respondent is otherwise known by the <morganstanleyafs.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). 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 uses the at-issue domain name to address a webpage at Complainant’s own website. Clearly this is an effort by Respondent to mislead internet users into believing that <morganstanleyafs.com> is somehow associated with Complainant or to pass itself off as Complainant. Respondent’s use of the at-issue domain name is thus not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). ). See Morgan Stanley v. Doniqish Doniqish, FA 1898199 (Forum June 24, 2020) (“Redirecting Internet users to the Complainant’s website without the Complainant’s authorization is not bona fide use or legitimate non-commercial fair use”); see also, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to 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 under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <morganstanleyafs.com> domain name was registered and used in bad faith. As discussed below without being exclusive, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, and as mentioned above regarding rights and legitimate interests, Respondent registered and uses <morganstanleyafs.com> to impersonate and pass itself off as Complainant. Doing so shows Respondent’s bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Next, Respondent’s incorporation of Complainant’s well-known trademark into its <morganstanleyafs.com> domain name disrupts Complainant’s business and is further indicative of bad faith pursuant to Policy ¶ 4(b)(iii) and otherwise. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith); see also, 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); see also, Morgan Stanley v. Doniqish Doniqish, FA 1898199 (Forum June 24, 2020) (“Redirecting a domain name containing the Complainant’s trade mark to the Complainant’s own web site in these circumstances is bad faith registration and use”).
Moreover, Respondent registered the <morganstanleyafs.com> domain name knowing that Complainant had trademark rights in MORGAN STANLEY and thus in <morganstanleyafs.com>. Respondent’s actual knowledge of Complainant’s rights in MORGAN STANLEY is evident from the notoriety of Complainant’s trademark; from Respondent’s inclusion of the suggestive abbreviation “AFS” in the domain name; and from the domain name’s direction of internet traffic to a webpage belonging to Complainant’s genuine website. Respondent’s prior knowledge of Complainant's MORGAN STANLEY trademark further indicates Respondent’s bad faith under the Policy. 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyafs.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 1, 2023
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