Morgan Stanley v. Sundown / James Moore
Claim Number: FA1606001677620
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Sundown / James Moore (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyonline.us>, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2016; the Forum received payment on June 2, 2016.
On June 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleyonline.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2016 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@morganstanleyonline.us. Also on June 6, 2016, 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 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 usTLD 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 usTLD Policy, usTLD 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 holds the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992), and uses it in connection with its business in the financial world. Respondent’s <morganstanleyonline.us> domain name adds the term “online” and the “.us” country-code top-level domain (“ccTLD”) to a fully incorporated MORGAN STANLEY mark, less the space.
Respondent has no rights or legitimate interests in the <morganstanleyonline.us> domain name. Respondent has not been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name because it does not resolve to an active website. See Compl., at Attached Ex. 8 (reading, “Website Coming Soon!”).
Respondent registered and used the disputed domain name in bad faith. The MORGAN STANLEY mark has garnered significant fame, and Respondent has inactively held the disputed domain, therefore Policy ¶ 4(a)(iii) nonexclusive bad faith registration and use is evident.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <morganstanleyonline.us> domain name was registered on May 21, 2016.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s famous and subsisting registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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 (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 adequately plead its valid and subsisting trademark rights by showing that it holds the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992).
The disputed domain name is confusingly similar to this valid, famous and subsisting trademark. Respondent’s <morganstanleyonline.us> domain name adds the term “online” and the “.us” ccTLD to a fully incorporated MORGAN STANLEY mark, less the space. The Panel finds that this is inadequate to distinguish the disputed domain name from such a famous trademark.
Therefore, the Panel finds that Respondent’s <morganstanleyonline.us> domain name is confusingly similar to the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the <morganstanleyonline.us> domain name. Respondent apparently has not been commonly known by the disputed domain name. Respondent is also not apparently sponsored by or legitimately affiliated with Complainant in any way. While the WHOIS lists “Sundown / James Moore” as registrant of record, the Panel finds that the evidence does not suggest Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
As such, the Panel concludes that Respondent has no rights or legitimate interests in or to the disputed domain name.
Further, the Panel finds that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent apparently inactively holds the disputed domain name because it does not resolve to an active website. See Compl., at Attached Ex. 8 (reading, “Website Coming Soon!”). The Panel finds that such inactive holding does not amount to rights and legitimate interests.
Therefore, the Panel finds that no rights or legitimate interests have been established by Respondent.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith registration or use may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (FORUM Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent registered or used the disputed domain name in bad faith. Complainant asserts that the MORGAN STANLEY mark has garnered significant fame (see Compl., at Attached Ex. 5 (brand ranking reports concerning Complainant’s marks), and therefore Respondent should be presumed to have had actual knowledge of Complainant. Complainant also notes that there is a possibility that Respondent was a former employee of Complainant, which bears on Respondent’s knowledge prior to registering the disputed domain. As this is a default case, the Panel accepts all reasonable allegations as true. As such, the Panel finds that Respondent registered or used the disputed domain name per Policy ¶ 4(a)(iii). See Istanbul Kültür Üniversitesi
Türkiye Cumhuriyeti v. Burak Kilanc, Kilanc Family, D2016-0391 (WIPO May
2, 2016) (“As a former employee of the Complainant, the Respondent was
obviously fully aware of the Complainant's DOGRU TERCIH trademark rights
when registering and transferring the disputed domain names to his own name”).
Lastly, Complainant urges that Respondent has inactively held the disputed domain, therefore Policy ¶ 4(a)(iii) nonexclusive bad faith registration and use is evident. See Complainant’s Attached Exhibit 8, demonstrating an inactively held webpage at the disputed domain name. Panels have agreed that such use may indicate bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. Jordin Barth, FA1211001473274 (FORUM Jan. 14, 2013) (finding that the respondent’s failure to make an active use of the disputed domain name from the time it was registered until the time it was contacted by the complainant’s counsel indicated that the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Accordingly, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <morganstanleyonline.us> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: July 1, 2016
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