Morgan Stanley v. John Doe as Holder of Domain Name <morganstanleyllc.com>,
Claim Number: FA1207001456105
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is John Doe as Holder of Domain Name <morganstanleyllc.com>, (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyllc.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2012; the National Arbitration Forum received payment on July 31, 2012.
On August 2, 2012, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <morganstanleyllc.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the names. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2012 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@morganstanleyllc.com. Also on August 6, 2012, 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.
The Panel extended the time to respond to the complaint until October 3, 2012. On October 1, 2012, Respondent filed a timely Response.
On August 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
The named Respondent says that he has never registered a domain name, nor authorized any other person to do so on his behalf. He has no opposition to Complainant’s requested transfer of the domain name as long as the identified Respondent is not made a party to these proceedings.
Complainant, Morgan Stanley, registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992).
Preliminary Issue: Redaction of Respondent’s Identity
The WHOIS information identifies the named Respondent as the registrant of the disputed domain name. However, the named Respondent is a victim of identity theft and did not register the domain name. The Panel has redacted Respondent’s personal information from the decision to prevent the further victimization of Respondent. See Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004), and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005)(the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents). See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). The disputed domain name is registered and in use by the actual registrant and holder of the domain name who under a fake identity is taking advantage of Complainant’s trademark. Therefore, the actual registrant and holder of the domain name, who is unknown, shall be considered to be the actual Respondent. See Enterprise Holdings, Inc. v. John Doe as holder of the domain names <dnterprise.com>, <ejterprise.com>, <entdrprise.com>, <entefprise.com>, <enterprisie.com>, and <enterprkse.com>, FA 1339545 (Nat. Arb. Forum Sept. 29, 2010). The findings and conclusions below refer to the actions of the actual Respondent and not the named Respondent who is the victim of identity theft.
General
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.
Complainant registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992). Thus, Complainant has established its rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant also asserts that Respondent’s <morganstanleyllc.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. The disputed domain name includes Complainant’s entire mark, merely removing the space between terms and adding the corporate identifier “llc” and the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also RE/MAX, LLC v. Pat Newton Properties c/o Patrick Newton, FA 1325776 (Nat. Arb. Forum July 9, 2010) (the Panel finds that “The addition of the corporate identifier “LLC” does not reduce the confusing similarity between the disputed domain name and the RE/MAX marks.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
There being no evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to an inactive website. Failing to make an active use of a disputed domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. 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)).
Furthermore, as the named Respondent in this case is a victim of identity theft, Respondent does not own rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent has registered several other domain names that incorporate the well-known marks of third parties, like DUPONT, FEDEX, GOOGLE, and WALT DISNEY. As Respondent has developed a pattern of infringing domain name registration, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
The disputed domain name resolves to an inactive website. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii) due to Respondent’s failure to make an active use of the disputed domain name. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Complainant contends that Respondent had actual or constructive knowledge of Complainant’s MORGAN STANLEY mark when Respondent registered the disputed domain name. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark; therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
As the named Respondent is a victim of identity theft, the identity theft is evidence that the actual Respondent of the disputed domain name registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Therefore, the Panel finds that Respondent registered and uses the <morganstanleyllc.com> domain name in bad faith under Policy ¶ 4(a)(iii).
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 <morganstanleyllc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., (Ret.), Panelist
Dated: October 4, 2012
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