Morgan Stanley v. Yykk Snc c/o Mattia Lumini
Claim Number: FA1412001597661
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Yykk Snc c/o Mattia Lumini (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley80.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 31, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <morganstanley80.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 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2015 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@morganstanley80.com. Also on January 2, 2015, 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.
A timely Response was received and determined to be complete on January 22, 2015.
An additional submission was received on January 23, 2015 and deemed compliant.
On January 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers financial, investment and wealth management services and has hundreds of offices in dozens of countries including in the United States and Italy. Complainant is the owner of the MORGAN STANLEY mark in countries all over the world including the United States and the European Union.
Complainant and its predecessors-in-interest have used the MORGAN STANLEY family of marks since as early as 1935 and the marks remain in use worldwide including in the United States and Italy. The trade mark is well known to consumers and has been recognized by a number of NAF panelists in earlier UDRP proceedings to be a well-known mark.
Complainant is the owner of the top level domain names <morganstanley.com> (registered in 1996) and <morganstanley.net> and many other variations thereof in the .com, .net, country code and other gTLD domain name spheres.
Respondent registered the disputed domain name on December 26, 2014. The disputed domain name does not resolve to an active website.
On or about December 29, 2014, Complainant’s representative in this proceeding sent an email to Respondent, requesting that he cancel the disputed domain name. In response, Respondent claimed he intends to use the disputed domain name in connection with a purported fan site about Complainant and its history. No proof of such purported intent was furnished. Complainant believes this claimed intention is false as a reverse Whois report shows Respondent has engaged in a pattern of registering domain names that merely add a descriptive number to famous trademarks of numerous well-known companies , e.g. <adidas100.com>, <allianz125.com>, <axa200.com>, <bentley100.com>, <braun100.com>, <columbiapictures100.com>, <intel50.com>, <maserati100.com>, <nestle150.com>, <warnerbros100.com>, etc.
The disputed domain name is virtually identical or confusingly similar to Complainant’s registered MORGAN STANLEY marks. The disputed domain name incorporates Complainant’s mark in its entirety. The addition of the number “80” does nothing to distinguish the disputed domain name from Complainant’s mark. “80” could represent the number of years Complainant has been in existence as of 2015.
Respondent has no rights or legitimate interests in respect of the disputed domain name:
(i) MORGAN STANLEY/MORGANSTANLEY 80.COM is not part of Respondent’s name;
(ii) Respondent is not actually engaged in any legitimate business or commerce under the name MORGAN STANLEY or MORGANSTANLEY80.COM;
(iii) Respondent is not commonly known by either of those names;
(iv) Respondent is not a licensee of Complainant and neither has he been authorized by Complainant to register or use the MORGAN STANLEY marks or the disputed domain name;
(v) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate or fair use or purpose; the passive holding of a domain name is not a bona fide or legitimate use;
(vi) Complainant’s MORGAN STANLEY marks are so well known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks to attract Internet users to his website;
(vii) Even if the purported intention to create a fan site is true, such use would not constitute legitimate or fair use as Complainant’s mark is incorporated in full in the disputed domain name. Internet users would be mistaken, when viewing Respondent’s website, that it emanates from or is sponsored, licensed or endorsed by Complainant.
The disputed domain name was registered and used in bad faith. Respondent was aware of Complainant’s MORGAN STANLEY marks when he chose and registered the disputed domain name and in fact chose it for the purpose of capitalizing on the fame of and confusing similarity with Complainant’s well-known mark, to attract Internet users to his website. This and his continued use and registration of the disputed domain name after receiving the letter of demand from Complainant’s representative constitute evidence of bad faith. The failure to make active use of the disputed domain name and Respondent’s pattern of cybersquatting are further evidence of bad faith use and registration.
B. Respondent
Respondent provided a brief response in which he stated that he is an Italian writer that writes about history. He has a passion in “company and brands history because brands and companies are made by people and brands’ history tells our history”. He claimed to be writing a book based on a research of historical brands and that “the [disputed] domain name] is part of this project and is only for historical and academic purpose, not commercial”. He asserted he has rights to own the disputed domain name.
C. Additional Submissions
Complainant points out Respondent did not dispute that Complainant has valid rights in the MORGAN STANLEY marks or that the disputed domain name is confusingly similar to the marks; Respondent did not provide any tangible proof of the claim he is writing an academic book; Respondent did not explain why his registration and use of the disputed domain name should be deemed bona fide and in good faith.
Complainant has established a prima facie case but Respondent has not produced any evidence to support his bald claims.
Consumer confusion would be compounded by the fact that Complainant itself provides a detailed history of the company and its services on its website. Respondent is not permitted to use the goodwill associated with Complainant’s famous MORGAN STANLEY marks to attract Internet users to his website and engender likely confusion.
(a) The disputed domain name is confusingly similar to the trade mark MORGAN STANLEY in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
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.
It is evident that Complainant has rights to the MORGAN STANLEY mark. This has not been disputed by Respondent. Further, the Panel agrees with the finding of earlier UDRP panels that the MORGAN STANLEY mark is well-known.
The only difference between the disputed domain name and Complainant’s mark lies in the addition of the numeral “80”. The Panel agrees with Complainant that this difference is of no effect and does not serve to distinguish the disputed domain name from Complainant’s mark. The MORGAN STANLEY mark is clearly identifiable and constitutes the primary or dominant element in the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
Paragraph 4(a)(i) of the Policy has therefore been established.
The Panel has considered the assertions made by Complainant and finds that a prima facie case has indeed been established by Complainant. Having done so, the burden shifts to Respondent to establish, with evidence, that he has rights or legitimate interests in respect of the disputed domain name. The principle that has been established by earlier UDRP panel decisions is that all that is required of a complainant is to establish a prima facie case in respect of paragraph 4(a)(ii) of the Policy in view of the inherent difficulty for one to prove a negative, whereas the respondent would presumably be in a much better position to provide evidence of its rights or legitimate interests in the domain name in dispute.
Paragraph 4(c) of the Policy states that “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes the total absence of any evidence of what Respondent has claimed to be doing, that is, to write a book or to create a fan site. The Respondent has therefore failed to show “demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” The passive holding of a domain name is not a bona fide or legitimate use. Respondent has not claimed to be known by the disputed domain name. In light of the fame of the MORGAN STANLEY mark and in the absence of Complainant’s authorization or license, the Panel does not see how Respondent would ultimately be able to show he has any basis to claim rights to the use of Complainant’s mark in the registration of the disputed domain name.
Paragraph 4(a)(ii) of the Policy has therefore been established.
Paragraph 4(b) of the Policy provides that the following circumstances, if found to be present, “shall be evidence of the registration and the use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Respondent’s reply contains an admission he knew of Complainant’s MORGAN STANLEY brand when he registered the disputed domain name and selected it since it is, by reasonable inference, a “historical brand”. Tied with this is a further inference that can be drawn, namely that Respondent acknowledges Complainant’s MORGAN STANLEY mark is well known by virtue of its long use. Respondent’s registration of the disputed domain name and numerous other domain names which incorporate well-known marks of famous companies reflect a pattern of conduct which shows bad faith on Respondent’s part. The circumstances strongly suggest that Respondent’s registration of the disputed domain name must have been for the “purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name” and/or “to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.” Respondent has not disputed nor provided legitimacy to this pattern of conduct but simply made a plain statement that he “has rights to own this domain.”
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a)(iii) of the Policy has therefore been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley80.com> domain name be TRANSFERRED from Respondent to Complainant.
FRANCINE TAN, Panelist
Dated: January 28, 2015
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