Morgan Stanley v. Stanley Morgan
Claim Number: FA1701001715028
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Stanley Morgan (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-us.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2017; the Forum received payment on January 31, 2017.
On Feb 01, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <morganstanley-us.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2017 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-us.com. Also on February 1, 2017, 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 February 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
a. The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (UDRP Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i)).
i. Complainant Morgan Stanley offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. With over 1,000 offices in over 40 countries, including the United States and China, and over 55,000 employees worldwide, Complainant offers truly global access to financial markets and advice.
ii. Complainant is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world.
iii. Complainant has used marks containing or comprising MORGAN STANLEY in connection with various financial and related services since at least as early as 1935, and the marks remain in wide-spread use today worldwide.
iv. In 2015, Complainant had net revenues of over US$ 35,000,000,000, nearly half of which revenues were attributable to its wealth management businesses.
v. Complainant has been a publicly traded company listed on the New York Stock Exchange since 1986, with over 11 million shares currently traded daily.
vi. Complainant is the owner of the domain name MORGANSTANLEY.COM, as well as thousands of variations thereof across a broad spectrum of gTLDs and ccTLDs. Complainant first registered MORGANSTANLEY.COM in 1996. The MORGANSTANLEY.COM domain name resolves to Complainant’s primary website, located at www.morganstanley.com, which website for nearly twenty years has provided information about Complainant and its financial services.
vii. As a result of extensive use, promotion, and advertisement, the MORGAN STANLEY marks are well-known to consumers and famous.
viii. In fact, MORGAN STANLEY has ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for at least the past two years, and was ranked numbers 26 and 24, respectively, in Brand Finances 2014 and 2015 Banking 500 global brands.
ix. A number of panels of the Forum have recognized 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). And at least one prior DRS expert has held: “The evidence that has been presented by the Complainant establishes that its ‘Morgan Stanley’ trade mark has become very well-known on an international basis, having been used extensively and continuously since 1935.” Morgan Stanley v. Morgan Stanley Latin America, LLC, DRS 3070 (Nominet Dec. 15, 2005).
x. The MORGAN STANLEY mark is an extremely important asset with enormous good will that inures to the benefit of Complainant.
xi. Complainant owns registrations for its MORGAN STANLEY marks for financial services and related goods and services in countries all over the world, including U.S. Registration Nos. 1707196 and 4470389.
xii. These trademark registrations “conclusively prove[] Complainant’s rights in the MORGAN STANLEY mark for the purposes of Policy ¶4(a)(i).” Morgan Stanley v. Denve Dallas, FA 1342149 (Forum Oct. 5, 2010).
xiii. Moreover, Complainant established its rights in the MORGAN STANLEY mark decades before Respondent registered the disputed domain name.
xiv. Respondent is the owner of the disputed domain name MORGANSTANLEY-US.COM. The disputed domain name, which incorporates Complainant’s MORGAN STANLEY mark in whole, must be deemed virtually identical or confusingly similar to Complainant’s registered MORGAN STANLEY marks. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
xv. The addition of the geographically descriptive term “US” does not obviate the confusing similarity between the disputed domain names and Complainant’s MORGAN STANLEY marks. See Morgan Stanley v zhao lanfa, FA 1634107 (Forum Sept. 21, 2015) (MORGANSTANLEYCHINA.CO confusingly similar to MORGAN STANLEY mark).
xvi. The addition of the gTLD “.com” and a hyphen and elimination of spaces also are irrelevant in distinguishing the disputed domain name from Complainant’s MORGAN STANLEY marks. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (elimination of spaces between terms does not establish distinctiveness from complainant’s mark).
b. Why Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. (UDRP Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii)).
i. Upon information and belief, neither MORGAN STANLEY nor the disputed domain name is part of Respondent’s name. Additionally, upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Respondent was not commonly known by those names. See Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name); SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY’S name). Although the WhoIs report lists the registrant as “Stanley Morgan,” this is not the same as “Morgan Stanley.” Moreover, a search by the undersigned of Google and the Lexis-Nexis database cannot confirm any person by the name “Stanley Morgan” associated with the other contact information provided in the WhoIs record. This leads the undersigned to believe that the WhoIs information provided is false.
ii. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY mark or the disputed domain name. Indeed, Respondent has no relationship whatsoever to Complainant. See Charles Jourdan Holding AG v. AAIM, D2000- 0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
iii. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use.
iv. The disputed domain name does not resolve to an active website. The passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006) (“passive holding of a domain name does not constitute ‘legitimate non- commercial or fair use’”); TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a) (ii)”).
v. “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 that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks.” Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015).
vi. As held by the Panel in Viceroy Cayman Ltd. v. Next Reservation Ltd / Privacy Prot. Serv., Inc. d/b/a PrivacyProtect.org:
Complainant’s VICEROY trademark has been extensively used and advertised for many years in association with upscale hotels and associated services and is well known in relation to such services. Respondent has registered or acquired the disputed domain name comprised of Complainant’s well-known trademark and the geographical terms ‘Yas’ and ‘Abu Dhabi’ which describe the geographical location of Complainant's hotel in the United Arab Emirates. Complainant asserts that based on the geographical terms associated with Complainant’s VICEROY trademark in the disputed domain name and the contents of the web page associated with the disputed domain name Complainant has made out a prima facie case that Respondent would not have chosen the disputed domain name unless Respondent was seeking to intentionally trade on the goodwill associated with Complainant’s VICEROY trademark. Accordingly, Respondent cannot establish a bona fide interest in the disputed domain name.
D2014-0919 (WIPO July 28, 2014). Similarly here, Respondent cannot establish a bona fide or legitimate interest in the disputed domain name, which incorporates in full one of the most famous marks in the global financial industry. See Morgan Stanley v. Morgan Stanley Latin America, LLC, DRS 3070 (Nominet Dec. 15, 2005) (“Given the strong reputation of the ‘Morgan Stanley’ name and business, and based on the facts and circumstances set out in the Complaint, I cannot think of any justification for the Respondent’s registration or use of the Domain Name”).
vii. Such use of the disputed domain name also causes “initial interest confusion,” which is disruptive to Complainant, its business, and goodwill in the MORGAN STANLEY marks. This also is not a legitimate use of a domain name or bona fide offering of goods and services. See Morgan Stanley v. Patrick Kerr, DRS 5306 (Nominet Feb. 11, 2008) (“as the Complainant suggests, the reason that an internet user would arrive at the Respondent’s website in the first place is likely to be that he or she was looking for the Complainant’s website or for some information in connection with its Dean Witter branded products and services. Thus they would have succumbed to what is often referred to as ‘initial interest confusion.’ This is a case where the Domain Name [DEANWITTER.CO.UK] is such that people would automatically assume that the Complainant owned or operated it. Accordingly, I find that the circumstances indicate that the type of confusion described in paragraph 3(a)(ii) of the Policy is either occurring or likely to occur”); Retail Royalty Co. and AE Direct Co LLC v. A K, FA 1580871 (Forum Oct. 31, 2014) (no legitimate interest or bona fide offering with respect to domain name that caused initial interest confusion).
viii. Lastly, Respondent does not have any legitimate rights in the disputed domain name given the prior use and registration of Complainant’s MORGAN STANLEY marks by Complainant and its affiliates and predecessors-in-interest in numerous countries throughout the world. Complainant’s prior use and registration of such famous marks gave Respondent actual, or at a minimum constructive, knowledge of such use and registration. See Morgan Stanley v. Chan, FA 244123 (Forum Apr. 23, 2004) (respondents likely had knowledge of complainant’s MORGAN STANLEY marks prior to registration of domain name due to complainant’s “long-standing use and fame” of marks, and fact that marks were registered with USPTO provided constructive notice to respondent of complainant’s rights in MORGAN STANLEY marks).
c. Why the domain name should be considered as having been registered and used in bad faith. (UDRP Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii)).
i. It clearly is more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant has a long and well established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he chose and registered the disputed domain name, and in fact chose the domain name because it was confusingly similar to Complainant’s well-known marks and intended to capitalize on that confusion to attract Internet users to its forthcoming website or intended business. This alone constitutes evidence of bad faith use and registration of a domain. See Disney Enters., Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM); Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”).
ii. Indeed, Complainant’s marks are so well-known that Respondent would be hard-pressed to provide any legitimate explanation for registering and using the disputed domain name other than to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY marks. See Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
iii. Respondent’s failure to make active use of the domain name in dispute is further evidence of bad faith use and registration. See Kohl's Illinois, Inc. v. c/o kphls.com; c/o kohals.com; c/o kohlsdepartmentstore.com; c/o khols.com, FA 1442950 (Forum June 7, 2012) (“Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under Policy ¶4(a) (iii)”); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that respondent’s failure to make active use of its domain name indicated that respondent registered disputed domain name in bad faith).
iv. By causing initial interest confusion, Respondent’s use and registration of the disputed domain name disrupts the business of Complainant, which is additional evidence of bad faith use and registration. See Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion).
v. Finally, because Complainant’s marks are so famous and registered in many countries throughout the world, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time he registered the confusingly similar domain name. Indeed, Respondent was on notice of Complainant’s rights based on the pending UDRP proceeding concerning MORGANSTANLEY.STORE. This knowledge indicates Respondent’s bad faith use and registration. See 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”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.”).
Complainant is a financial, investment, and wealth management company, offering services to clients through a combination of institutional and retail capabilities. Complainant was originally formed as a partnership by former J.P. Morgan & Co. partners Henry Sturgis Morgan (a grandson of John Pierpont Morgan) and Harold Stanley (inter alia) in 1935 in response to the Glass-Steagall Act. Complainant now has over 1,000 offices in over 40 countries, and has over 55,000 employees worldwide. Complainant registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Complainant has established rights in the MORGAN STANLEY mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <morganstanley-us.com> is confusingly similar because it fully incorporates Complainant’s mark and only differs by the addition of a dash, a generic term (“us”), the gTLD “.com”. Fully incorporating a mark with these sorts of minor changes does not adequately distinguish between the mark and the domain name. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i).). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent uses the Complainant’s entries MORGAN STANLEY mark, which tends to raise this Panel’s level of scrutiny. Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent has no rights or legitimate interests in <morganstanley-us.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “Stanley Morgan” as the registrant. Complainant claims there is no evidence Respondent has ever been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the MORGAN STANLEY mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant conducted a Google and Lexis-Nexis search for the registrant with no results. Basically, Complainant claims Respondent fraudulently provided WHOIS information to suggest Respondent was commonly known by the disputed domain name when it wasn’t. Respondent has done nothing to refute this claim. Therefore, the Panel finds Respondent did not give accurate information when it registered the disputed domain name. Respondent is not commonly known by <morganstanley-us.com> under Policy ¶4(c)(ii).
Complainant claims Respondent’s actions do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name directs users to a non-functioning webpage. Failing to make active use of a domain name demonstrates lack of a bona fide offering of goods or services. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). The disputed domain name resolves in an entirely blank page with no content. Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Finally, Respondent has not acquired any rights to the domain name by registering it because Respondent did not provide truthful WHOIS information when the domain name was registered (and through the present time). This means Respondent could not acquire any rights because it has not publicly associated itself with the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the domain name in bad faith by failing to actively use it. Prior Panels have decided failing to make an active use of a domain can evince bad faith and this Panel has generally agreed. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Respondent’s domain resolves to a blank, non-functioning page with no content. Respondent has not claimed to use the domain name for other purposes less visible purposes, such as an email server or an electronic portal. This Panel must conclude Respondent registered the domain name and acted in bad faith under Policy ¶4(a)(iii) by failing to make an active use of the domain name.
Complainant claims Respondent had actual knowledge of Complainant’s mark. Even this Panel will admit the Morgan Stanley mark is rather well known. Certainly anyone within the United States is likely to have heard of it, which means Respondent had actual knowledge (given Respondent’s purported El Paso, Texas address). This amounts to bad faith registration and use under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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)..
Finally, providing false WHOIS information in a commercial context raises the rebuttable presumption of bad faith registration and use. Since Respondent has done nothing to rebut the presumption, this Panel is comfortable finding bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <morganstanley-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 9, 2017
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