Morgan Stanley v. Raul Tamez / Morgan Stanley Inc
Claim Number: FA1705001732705
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Raul Tamez / Morgan Stanley Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-morgan-stanley.com>, registered with Tucows Domains 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2017; the Forum received payment on May 22, 2017.
On May 23, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <www-morgan-stanley.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@www-morgan-stanley.com. Also on May 25, 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 June 21, 2017, 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 offers a full range of financial, investment, and wealth management services to a broad spectrum of clients. Complainant registered its MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196, registered Aug. 11, 1992), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <www-morgan-stanley.com> is identical or confusingly similar to Complainant’s mark because it merely incorporates the prefix “www”, a hyphen between “www” and “morgan”, a hyphen between “morgan” and “stanley” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <www-morgan-stanley.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its MORGAN STANLEY mark. The WHOIS registrant information does not indicate that Respondent is not commonly known by the disputed domain name. Respondent does not make any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as it resolves to a website identical to that of Complainant’s. Respondent must have registered the disputed domain names in order to take advantage of and intentionally trade on the goodwill associated with Complainant’s mark. Lastly, Respondent engages in typosquatting with the disputed domain name.
Respondent has registered and is using the <www-morgan-stanley.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by including competitors’ links on the resolving webpage. Further, Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the MORGAN STANLEY mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Additionally, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. Moreover, Respondent engages in typosquatting with the disputed domain name. Lastly, Respondent used a privacy service while registering the <www-morgan-stanley.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services to a broad spectrum of clients. Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i) through registration with the USPTO (Reg. No. 1,707,196, registered Aug. 11, 1992). Respondent’s <www-morgan-stanley.com> is confusingly similar to Complainant’s mark.
Respondent, Raul Tamez / Morgan Stanley Inc, registered the<www-morgan-stanley.com> domain name on May 5, 2017.
Respondent lacks rights and legitimate interests in the <www-morgan-stanley.com> domain name. The domain name resolves to a website identical to that of Complainant’s.
Respondent has registered and is using the <www-morgan-stanley.com> domain name 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 has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i) through registration with the USPTO. 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).
Respondent’s <www-morgan-stanley.com> is confusingly similar to Complainant’s MORGAN STANLEY mark because it merely incorporates the prefix “www”, a hyphen between “www” and “morgan”, a hyphen between “morgan” and “stanley” and the generic top-level domain “.com”.
Respondent has no rights or legitimate interests in the <www-morgan-stanley.com> domain name. Complainant has not licensed or authorized Respondent to use its 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).
Additionally, the WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record listed “CONTACT PRIVACY INC. CUSTOMER” as the registrant and “CONTACT PRIVACY INC CUSTOMER” as the registrant organization prior to this proceeding. After the privacy service was lifted, the WHOIS information listed the registrant as ““RAUL TAMEZ” and the registrant’s organization as “MORGAN STANLEY INC”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the <www-morgan-stanley.com> domain name under Policy ¶¶ 4(c)(i) and (iii). Rather, Respondent uses the resolving webpage to pass itself off as Complainant by imitating Complainant’s website. A respondent’s attempt to pass itself off as the complainant is not considered a bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Finally, Respondent’s <www-morgan-stanley.com> is a typosquatted version of Complainant’s MORGAN STANLEY mark. Typosquatting is the practice of taking advantage of Internet users’ misspellings or typographical errors and is evidence that a respondent lacks rights and legitimate interests in a domain name. See indyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). Here, the <www-morgan-stanley.com> domain name capitalizes on Internet users mistake of including a hyphen in the mark, and substituting a hyphen for a period after the prefix “www.”
Respondent disrupts Complainant’s business by using a confusingly similar domain name that resolves in a website identical to Complainant’s. Registration and use of a confusingly similar domain name to display a website identical to a complainant’s is bad faith under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Further, Respondent registered and uses the <www-morgan-stanley.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the MORGAN STANLEY mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content constitutes bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant also contends that in light of the fame and notoriety of Complainant’s MORGAN STANLEY mark, it is inconceivable that Respondent could have registered the <www-morgan-stanley.com> domain name without actual knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith 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); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Additionally, Respondent’s use of typosquatting is evidence of bad faith. Engaging in typosquatting to benefit from common typing mistakes of Internet users shows bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Lastly, Respondent’s use of a privacy shield to disguise its identity is evidence of bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct).
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 <www-morgan-stanley.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 30, 2017
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