Morgan Stanley v. Yousuf Mamun
Claim Number: FA2111001972843
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Yousuf Mamun (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyclientserv.me>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2021; the Forum received payment on November 11, 2021.
On November 11, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <morganstanleyclientserv.me> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 November 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@morganstanleyclientserv.me. Also on November 11, 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 December 7, 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 and CLIENTSERVE marks established by its ownership of the trademark and service mark registrations described below, and its extensive international use of the marks in its financial services business, including on the Internet.
Complainant submits that it has used its MORGAN STANLEY mark continuously since 1935, during which time it has grown to become a publicly traded company listed on the New York Stock Exchange in 1986 and having over 1,000 offices in over 40 countries, with over 55,000 employees worldwide.
Complainant adds that in 2018, it had net revenues of over US$ 40,000,000,000, as evidenced by excerpts from Complainant’s 2018 Form 10-K annual report as filed with the U.S. Securities and Exchange Commission, which have been adduced in evidence in an annex to the Complaint.
Complainant submits that the disputed domain name, is confusingly similar to its MORGAN STANLEY and CLIENTSERV marks, as it contains both marks in their entirety. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
Complainant submits that the elimination of spaces between the elements of its trademark and service marks in the disputed domain name as well as the addition of the country code Top Level Domain (“ccTLD”) <.me> extension, fail to obviate the confusing similarity. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (elimination of spaces between terms does not establish distinctiveness from complainant’s mark).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that upon information and belief, neither MORGAN STANLEY, CLIENTSERV nor the disputed domain name is part of Respondent’s name.
Additionally, upon information and belief, Respondent has not engaged in any business or commerce under the name MORGAN STANLEY or CLIENTSERV or the disputed domain name, nor was Respondent 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 asserts that Respondent has no relationship with Complainant, nor is Respondent a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY or CLIENTSERV marks or the disputed domain name. 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 furthermore 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 a screenshot adduced in evidence in an annex to the Complaint, the disputed domain name does not resolve to an active website. Complainant argues that the passive holding of a domain name does not constitute 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 non-commercial or fair use’”); TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent’s [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii)”).
Complainant adds that its MORGAN STANLEY mark is so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of, and intentionally trade on, the goodwill associated with Complainant’s marks. Complainant argues that such use does not constitute a legitimate or bona fide use of a domain name. See Drexel University v. David Brouda, D2001-0067 (WIPO Mar. 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”).
Complainant additionally contends that such use of the disputed domain name that is confusingly similar to its MORGAN STANLEY and CLIENTSERV trademarks must cause “initial interest confusion,” which is disruptive to Complainant, its business, and goodwill in Complainant’s mark. Complainant argues that this also is neither a legitimate use of a domain name or bona fide offering of goods and services. See Morgan Stanley v. Patrick Kerr, DRS 5306 (Nominet Feb. 11, 2008) (“as the Complainant suggests, the reason that an internet user would arrive at the Respondent’s website in the first place is likely to be that he or she was looking for the Complainant’s website or for some information in connection with its Dean Witter branded products and services. Thus they would have succumbed to what is often referred to as ‘initial interest confusion.’ This is a case where the Domain Name [DEANWITTER.CO.UK] is such that people would automatically assume that the Complainant owned or operated it. Accordingly, I find that the circumstances indicate that the type of confusion described in paragraph 3(a)(ii) of the Policy is either occurring or likely to occur”).
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that it is clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to both Complainant’s MORGAN STANLEY and CLIENTSERV marks.
Complainant asserts that it has a long and well-established reputation in the MORGAN STANLEY mark through its exclusive use in the financial and investment services industries throughout the world, and argues that there can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he chose and registered the disputed domain name.
Complainant contends that Respondent clearly chose the disputed domain name because it is confusingly similar to Complainant’s well-known marks, and intended to capitalize on that confusion, arguing that this alone constitutes evidence of bad faith of an registration of a domain. See Disney Enterprises, 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 its MORGAN STANLEY mark is so well-known that Respondent would be hard-pressed to provide any legitimate explanation for registering the disputed domain name other than to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY marks. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith).
Complainant further submits 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 adds 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).
Finally, Complainant submits that because its 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 registered the confusingly similar domain name and argues that 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 is a provider of financial services to the international markets and is the owner of the trademarks and service marks MORGAN STANLEY and CLIENTSERV for which it owns a portfolio of registrations including the following:
· United States registered service mark MORGAN STANLEY, registration number 1,707,196, registered on the Principal Register on August 11, 1993, for service in international class 36;
· United States registered trademark MORGAN STANLEY, registration number 4, 470, 389 on the Principal Register on January 21, 2014 for goods in international classes 9 and 16;
· United States registered service mark CLIENTSERVE, registration number 2.322.252, registered on the Principal Register on February 22, 2000 for services in international class 36.
Complainant has an established Internet presence, owing a large portfolio of domain names incorporating the MORGAN STANLEY mark and maintains its official website at <www.morganstanley.com>, as well as thousands of variations thereof across a broad spectrum of generic Top Level Domains (“gTLDs”) and ccTLDs.
The disputed domain name <morganstanleyclientserv.me> was registered on October 25, 2021 and resolves to an inactive website.
There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details for the disputed domain name in the course of this proceeding.
The Registrar disclosed the identity of Respondent, who has availed of a privacy service to conceal his identity on the published WhoIs and confirmed that he is the registrant of the disputed domain name.
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 convincing evidence of its rights in the MORGAN STANLEY and CLIENTSERVE marks established by its ownership of the trademark and service mark registrations, described above and its extensive international use of the marks in its financial services business since 1935, growing to become a publicly traded company listed on the New York Stock Exchange, with over 1,000 offices in over 40 countries, with over 55,000 employees worldwide and net revenues of over US$ 40,000,000,000, in 2018.
The disputed domain name consists of Complainant’s MORGAN STANLEY and CLIENTSERV marks, each in its entirety, together with the ccTLD extension <.me>.
Complainant’s MORGAN STANLEY and CLIENTSERVE marks are clearly identifiable in the disputed domain name, notwithstanding that there are no spaces between the elements. There are no other elements in the disputed domain name except for the ccTLD extension <.me>.
In the context of this Complaint the ccTLD extension has no distinguishing character as it would be considered by Internet users to be a necessary technical element in the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the MORGAN STANLEY and CLIENTSERV trademarks and service marks 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 an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that:
· upon information and belief, neither MORGAN STANLEY, CLIENTSERV nor the disputed domain name is part of Respondent’s name;
· upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY and CLIENTSERV marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or CLIENTSERV or the disputed domain name, and Respondent was not commonly known by those names;
· Respondent has no relationship with Complainant and is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY or CLIENTSERV marks or the disputed domain name;
· 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;
· a screenshot adduced in evidence in an annex to the Complaint, the disputed domain name does not resolve to an active website and such passive holding of the disputed domain name does not constitute a legitimate use or bona fide offering of goods or services;
· Complainant’s MORGAN STANLEY mark is so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of, and intentionally trade on, the goodwill associated with Complainant’s marks;
· such use of the disputed domain name that is confusingly similar to its MORGAN STANLEY and CLIENTSERV trademarks must cause “initial interest confusion,” which is disruptive to Complainant, its business, and goodwill in Complainant’s mark. Complainant argues that this also is neither a legitimate use of a domain name or bona fide offering of goods and services.
It is well established that once our complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced convincing evidence that it has a long and well-established reputation in the MORGAN STANLEY mark through its exclusive use in the financial and investment services industries throughout the world, and this Panel accepts that there can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he chose and registered the disputed domain name.
While Complainant’s CLIENTSERV mark may not have achieved the status of a famous mark, the fact that the disputed domain name consists of two of Complainant’s registered trademarks and service marks viz. MORGAN STANLEY and CLIENTSERVE, puts it beyond doubt that the registrant was aware of Complainant, its rights, goodwill and reputation in its trademarks when the disputed domain name was chosen and registered.
This Panel finds therefore that the disputed domain name was registered in bad faith in order to target and take predatory advantage of the MORGAN STANLEY and CLIENTSERV marks and Complainant’s goodwill invested in them.
The screen capture adduced in evidence shows that a search for the disputed domain name generates an inactive screen. This Panel finds that in the circumstances of this Complaint, Respondent’s failure to make active use of the disputed domain name and passive holding of the disputed domain name constitutes bad faith use, because, given the fame of the MORGAN STANLEY mark in particular, it is implausible that Respondent is passively holding the disputed domain name for any good faith reason. In making this finding, this Panel has considered that Respondent has availed of a privacy service to conceal his identity on the published WhoIs.
This Panel finds therefore that the disputed domain name <morganstanleyclientserv.me> was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the remedy requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyclientserv.me> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 7, 2021
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