Morgan Stanley v. Above.com Domain Privacy
Claim Number: FA1510001642170
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgansranley.com>, registered with Above.com Pty Ltd.
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 Forum electronically on October 13, 2015; the Forum received payment on October 13, 2015.
After numerous requests, and after commencement of this proceeding, on October 19, 2015, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <morgansranley.com> domain name is registered with Above.com Pty Ltd., and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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”). Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On October 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@morgansranley.com. Also on October 19, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 has rights in the MORGAN STANLEY mark through registration with the United Stated Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). Respondent’s <morgansranley.com> domain name is confusingly similar to the MORGAN STANLEY mark as the domain merely replaces the “T” in the mark with “R,” a letter adjacent on a qwerty keyboard. Further, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does nothing to alleviate a finding of confusing similarity under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in respect of the <morgansranley.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent attempts to engage in phishing or place malware on unsuspecting Internet users’ computers by proffering a fake error message and encouraging Internet users to disclose personal information to a fake Microsoft technician. Respondent has also made a general offer for sale on the Registrar of Record’s website. Respondent has not been using the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Respondent registered and used the disputed domain in bad faith. Respondent’s phishing and malware distribution are evidence of bad faith registration under Policy ¶ 4(b)(iv). Further, Respondent registered and used the disputed domain name with actual and/or constructive knowledge of the MORGAN STANLEY mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, has rights in the MORGAN STANLEY mark through registration with the United Stated Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). Complainant uses the MORGAN STANLEY mark in connection with financial, investment, and wealth management services to a broad spectrum of clients worldwide. Respondent’s <morgansranley.com> domain name is confusingly similar to the MORGAN STANLEY mark.
Respondent, Above.com Domain Privacy, registered the <morgansranley.com> domain name on November 7, 2013. Respondent attempts to engage in phishing or place malware on unsuspecting Internet users’ computers by proffering a fake error message and encouraging Internet users to disclose personal information to a fake Microsoft technician.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <morgansranley.com> domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i) as the domain merely replaces the “T” in the mark with “R,” a letter adjacent on a qwerty keyboard. Further, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” and elimination of spacing between words of the mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in respect of the <morgansranley.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant also denies any association with Respondent. See, e.g., 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent attempts to engage in phishing or place malware on unsuspecting Internet users’ computers by proffering a fake error message and encouraging Internet users to disclose personal information to a fake Microsoft technician. In addition, Respondent has also made a general offer for sale of the domain on the Registrar of Record’s website. Such use does not indicate that a respondent has rights or legitimate interests in a disputed domain under Policy ¶¶ 4(c)(i) or (iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). The Panel finds that Respondent has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Respondent registered and used the <morgansranley.com> domain in bad faith. General offers for sale have been seen by past panels to communicate that an infringing domain was registered for the sole purpose of capitalizing on the goodwill associated with a complainant. See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Respondent’s phishing and malware distribution show bad faith registration and use under Policy ¶ 4(b)(iv). SeeHess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv).
Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <morgansranley.com> domain name and therefore, registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <morgansranley.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 24, 2015
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