Morgan Stanley v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1905001841916
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyatwork.com>, registered with Dynadot, 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 May 7, 2019; the Forum received payment on May 7, 2019.
On May 7, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <morganstanleyatwork.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2019 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@morganstanleyatwork.com. Also on May 10, 2019, 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 June 3, 2019, 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 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 has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Next, Respondent’s <morganstanleyatwork.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as the addition of the generic term “at work” and the “.com” generic top-level domain (“gTLD”) does not obviate the confusing similarity between the mark and disputed domain name.
Respondent has not rights or legitimate interests in the <morganstanleyatwork.com> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use Complainant’s MORGAN STANLEY mark. Further, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use as it instead resolves to an inactive website. Additionally, Respondent offers the disputed domain name for sale.
Respondent’s registered and uses the disputed domain name in bad faith as Respondent offers to sell the domain name to the general public. Additionally, Respondent fails to make an active use of the domain name’s resolving webpage. Further, Respondent engaged in opportunistic bad faith by registering the domain name three days after Complainant filed an intent to use application for MORGAN STANLEY AT WORK mark. Moreover, Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark when it registered the domain name due to the worldwide and global fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the MORGAN STANLEY mark.
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 name after Complainant acquired rights in the MORGAN STANLEY trademark.
Complainant filed its intent to use application regarding MORGAN STANLEY AT WORK with the USPTO three days prior to Respondent’s registration of <morganstanleyatwork.com>.
Respondent holds the at-issue domain name inactively while offering it for sale.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registrations for MORGAN STANLEY, as well as other registrations worldwide, are conclusive evidence of its rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <morganstanleyatwork.com> domain name contains Complainant’s entire MORGAN STANLEY trademark less its space, followed by the suggestive term “atwork” (at work). The domain concludes with the top level domain name “.com.” Respondent’s inclusion of the “atwork” acronym in its trademark laden <morganstanleyatwork.com> domain name only adds to any confusion between the domain name and Complainant’s trademark since the term relates to Complainant’s finance related business and perhaps more significantly Complainant had filed an intent to use application for MORGAN STANLEY AT WORK a few days prior to Respondent registering the at-issue domain name. The removal of the space in Complainant’s trademark and the addition of a top-level domain name are irrelevant under Policy ¶ 4(a)(i) analysis. The differences between Complainant’s trademark and Respondent’s domain name fail to differentiate the MORGAN STANLEY trademark from Respondent’s domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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 Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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, 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.
The WHOIS information for the <morganstanleyatwork.com>domain name identifies the domain name’s registrant as “Super Privacy Service LTD c/o Dynadot” and the full record before the Panel contains no evidence that tends to prove that Respondent is commonly known by <morganstanleyatwork.com>. The Panel therefore concludes that Respondent is not commonly known by the <morganstanleyatwork.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also, Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Furthermore, Respondent’s holds the at-issue domain name inactively and uses the webpage addressed by the domain name to offer the domain name for sale. Respondent’s use of the domain name in this manner is not indicative of rights or legitimate interests 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)); see also, Microgaming Software Systems Limited v. Jumbo Domains, D2008-1918 (WIPO Feb. 10, 2009) (parking and offering domain name for sale was not bona fide offering of goods or services);
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent offers to sell the at-issue domain name. Respondent’s offer suggests an amount ($900) that is in excess of Respondent’s reasonable out-of pocket expenses incurred in connection with the domain name. Respondent’s general offer to sell the domain name demonstrates bad faith pursuant to Policy 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Next and as also considered above regarding rights and legitimate interests, Respondent holds the <morganstanleyatwork.com> domain name inactively. Respondent’s domain name addresses a webpage containing only its offer to sell the domain name. Respondent’s failure to make use of the at-issue domain name indicates bad faith registration and use pursuant to 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).”).
Additionally, Respondent engaged in opportunistic bad faith by registering the domain name a few days after Complainant filed its intent to use application for MORGAN STANLEY AT WORK with the USPTO. In doing so Respondent intended to improperly capitalize on a likely soon-to-be increase in the notoriety of Complainant’s putative trademark. A respondent’s anticipatory registration of a mark, which in the near future appears destined to swell in notoriety, has been labeled by numerous panel as opportunistic bad faith and is indicative of bad faith registration and use of a domain name. See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (finding bad faith where the respondent registered the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names in anticipation of the pending acquisition and rebranding of a car dealership, holding: “The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”).
Finally, Respondent registered the <morganstanleyatwork.com> domain name knowing that Complainant had trademark rights in the MORGAN STANLEY trademark. Respondent’s prior knowledge of Complainant’s trademark is undeniably evident because of the notoriety of Complainant’s long held and famous trademark. Respondent’s knowledge of Complainant's trademark further indicates that Respondent registered and used the <morganstanleyatwork.com> domain name in bad faith 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyatwork.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 4, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page