Morgan Stanley v. Mark Palmer / Magicmojo
Claim Number: FA1606001679014
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Mark Palmer / Magicmojo (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanley.press>, <morganstanley.tech>, and <morganstanley.space>, registered with NameCheap, Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2016; the Forum received payment on June 10, 2016.
On June 13, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <morganstanley.press>, <morganstanley.tech>, and <morganstanley.space> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@morganstanley.press, postmaster@morganstanley.tech, and postmaster@morganstanley.space. Also on June 14, 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 July 11, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant offers financial, investment and wealth management services worldwide.
2. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Respondent’s <morganstanley.press>, <morganstanley.tech>, and <morganstanley.space> domain names are identical to the MORGAN STANLEY mark because each domain contains the mark, less the space between words, and a generic top-level domain (“gTLD”).
3. Respondent is not commonly known by the disputed domain names because it has not been authorized by Complainant to use the MORGAN STANLEY mark and because there is no evidence provided to suggest being commonly known by the domains.
4.Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name resolves to a parked webpage containing links which compete with Complainant and from which Respondent presumably receives click-through referral fees.
5. Respondent registered the <morganstanley.press>, <morganstanley.tech>, and <morganstanley.space> domain names in bad faith because it has offered them for sale to Complainant. Respondent uses all of the domain names in bad faith because each domain name resolves to a parked webpage containing links which compete with Complainant, and, from which Respondent presumably receives click-through referral fees while disrupting Complainant’s business. Respondent also registered each domain in bad faith because it did so with actual knowledge of Complainant’s MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the business of offering financial, investment and wealth management services worldwide.
2. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992).
3. The <morganstanley.press> domain name was registered on June 3, 2016 and the <morganstanley.tech> and <morganstanley.space> domain names on June 6, 2016.
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 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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant offers financial, investment and wealth management services worldwide. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl., at Attached Ex. 6. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i) even when Complainant and Respondent operate in different countries. See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”). As Complainant submits, past panels have also held that MORGAN STANLEY is a well-known mark. See, e.g., Morgan Stanley v. jorge Stephan, FA 1219168 (Forum Sept. 12, 2008); Morgan Stanley v. Meow, FA 671304 (Forum May 22, 2006); Morgan Stanley v. Albert Jackson, FA 244092 (Forum Apr. 19, 2004). Accordingly, the Panel finds that Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant submits that Respondent’s <morganstanley.press>, <morganstanley.tech>, and <morganstanley.space> domain names are identical to the MORGAN STANLEY mark because each domain contains the mark, less the space between words, and a gTLD. The removal of space between the words of a mark and the addition of a gTLD are required by domain name syntax and therefore, do not differentiate a disputed domain name from a mark. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4 (a)(i) analysis.”). The Panel therefore finds that Complainant has established rights in the MORGAN STANELY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY mark and to use it in its domain names;
(b) Respondent registered the <morganstanley.press> domain name on June 3, 2016 and the <morganstanley.tech> and <morganstanley.space> domain names on June 6, 2016;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not a licensee of Complainant and is not commonly known by the disputed domain names. The Panel notes the publically available WHOIS information which lists “Mark Palmer” of “Magicmojo” as registrant. Based on the available information the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
All of these matters go to make out the prima facie case against Respondent. It remains then to be seen if Respondent has rebutted the prima facie case against him.
Respondent has not filed a Response in which he has sought to rebut the prima facie case. He has, however, entered into correspondence with Complainant’s attorneys which endeavours to explain his registration of at least one of the domain names. It is therefore necessary to look further at the evidence.
Complainant alleges that Respondent has failed to use the domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <morganstanley.tech> and <morganstanley.space> domain names have been used to resolve to a parked webpage containing links which compete with Complainant in financial services and, from which Respondent presumably receives click-through referral fees. Complainant’s Exhibits 8 and 9 display screenshots of the website to which at least those two domain names resolve, showing links including “Loans – Personal & Bad Credit,” “Short Term Loans up to $1,000,” and “Payday Loans.” The other domain name, <morganstanley.press>, resolves to a website apparently referring to Respondent’s grandfather and Respondent has relied on this in the correspondence to argue that his ownership and use of that domain name is legitimate as it was registered and is being used as a tribute to his grandfather.
With respect to the use being made of the <morganstanley.tech> and <morganstanley.space> domain names, past panels have found that the use of those domain names referred to above cannot amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Accordingly, the Panel finds that Respondent has not used the websites resolving from the <morganstanley.tech> and <morganstanley.space> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). With respect to those domain names, Respondent has therefore not rebutted the prima facie case against him.
With respect to the use made of the <morganstanley.press> domain name, the question becomes whether the Panel accepts Respondent’s argument and whether it amounts to a right or legitimate interest in the domain name. The Panel has no wish to cast aspersions of any sort on Respondent, but it is unable on the balance of probabilities to accept Respondent’s submission. In reaching that conclusion the Panel is influenced by the circumstances that:
(a) Respondent registered three domain names including the MORGAN STANLEY trademark when clearly one would have been sufficient for the memorial;
(b) he registered two other domain names that he has allowed to be used for competing financial services and which are still so used today; and
(c) before receiving the letter of demand from Complainant’s attorneys he caused the domain name to resolve to the website of another domain name, <mcdonalds.press>, suggesting that this was an attempt to misappropriate the name and trademark of the prominent McDonald’s company.
The Panel has carefully considered Respondent’s correspondence, but considering all of the circumstances, the Panel is unable to find on the balance of probabilities that Respondent has shown that he has a right or legitimate interest in the <morganstanley.press> domain name or in the other two domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that in response to a demand letter sent by Complainant, Respondent replied by offering at least the <morganstanley.press> domain name for sale. That is true at least for that domain name and by inference it is true of the other domain names as well, implying Policy ¶ 4(b)(i) bad faith with respect to all three domain names. See Compl., at Attached Ex. 12. Panels have agreed that offers for sale in excess of out-of-pocket costs constitute evidence of bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). In correspondence with Complainant’s attorneys, Respondent claims that he intends to use the disputed domain name as a tribute to his grandfather “Morgan Stanley,” and has attempted to negotiate with Complainant to recover enough to build “a suitable memorial…” to him. The Panel does not accept this explanation, for the reasons already given, and finds that the evidence suggests that Respondent registered the disputed domain names for the purpose of transferring them to Complainant for a profit when the opportunity arose, within the meaning of Policy ¶ 4(b)(i).
Secondly, Complainant submits that Respondent uses the <morganstanley.tech> and <morganstanley.space> domain names for the purpose of disrupting Complainant’s business operations because they resolve to a parked webpage containing links which compete with Complainant and from which Respondent presumably receives click-through referral fees. The Panel agrees with that conclusion and also finds that it must apply to all three domain names. Complainant’s Exhibits 8 and 9 displays screenshots of the above two domain names, showing links including “Loans – Personal & Bad Credit,” “Short Term Loans up to $1,000,” and “Payday Loans.” Past panels have found such use to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). As the Panel finds such use in the present case, the Panel finds that Respondent uses the domain names in bad faith under Policy ¶ 4(b)(iii).
Thirdly, Complainant also alleges that the disruptive use described above shows that Respondent uses the domains in bad faith to attract Internet users for commercial gain. Past panels have agreed that such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). As the Panel finds such behavior by Respondent here, the Panel finds that Respondent uses the domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Fourthly, Complainant submits that because of the fame of the MORGAN STANLEY mark, Respondent must have registered and subsequently used the disputed domain names with actual knowledge of the mark and Complainant’s rights in the mark. Complainant cites the following case in support of its argument: American Express Marketing & Development Corp. v. Domain Admin / Axsiom, FA 1643980 (Forum Dec. 7, 2015) (finding bad faith where “due to the fame of Complainant’s mark, it is difficult to perceive of the circumstances in which Respondent would not have known about Complainant’s rights and the Panel finds that Respondent had actual knowledge of the mark and Complainant’s rights”). As the Panel agrees that Complainant’s mark has garnered fame and notoriety, it agrees that Respondent registered and used the disputed domains with actual knowledge, thereby in bad faith per Policy ¶ 4(a)(iii).
The Panel also notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO Nov. 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <morganstanley.press>, <morganstanley.tech>, and <morganstanley.space> domain names using the MORGAN STANLEY mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley.press>, <morganstanley.tech> and <morganstanley.space> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 12, 2016
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