Morgan Stanley v. Orion Ross
Claim Number: FA1711001760427
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Orion Ross (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleycrypto.com>, <morganstanleybitcoin.com>, <morganstanleyeth.com>, <morganstanleybtc.com>, and <morganstanleycryptocurrency.com>, 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 November 29, 2017; the Forum received payment on November 29, 2017.
On November 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleycrypto.com>, <morganstanleybitcoin.com>, <morganstanleyeth.com>, <morganstanleybtc.com>, and <morganstanleycryptocurrency.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@morganstanleycrypto.com, postmaster@morganstanleybitcoin.com, postmaster@morganstanleyeth.com, postmaster@morganstanleybtc.com, and postmaster@morganstanleycryptocurrency.com. Also on December 4, 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 December 29, 2017, 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 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 is a financial, investment, and wealth management company, offering services to clients through a combination of institutional and retail capabilities. Complainant 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). See Compl., at Attached Ex. 6. Respondent’s <morganstanleycrypto.com>, <morganstanleybitcoin.com>, <morganstanleyeth.com>, <morganstanleybtc.com>, and <morganstanleycryptocurrency.com> domain names are confusingly similar to Complainant’s mark as they each incorporate Complainant’s MORGAN STANLEY mark in whole and add a generic or descriptive term relating to virtual currencies along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <morganstanleycrypto.com>, <morganstanleybitcoin.com>, <morganstanleyeth.com>, <morganstanleybtc.com>, and <morganstanleycryptocurrency.com> domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent registered the disputed domain names to take advantage of and intentionally trade on the goodwill associated with Complainant’s mark to merely resolve to inactive webpages. See Compl. Ex. 8.
Respondent registered and uses the <morganstanleycrypto.com>, <morganstanleybitcoin.com>, <morganstanleyeth.com>, <morganstanleybtc.com>, and <morganstanleycryptocurrency.com> domain names in bad faith. Respondent registered and uses the domain names to disrupt Complainant’s business with the intent to deceive Internet users in regard to the source or affiliation of the domain names. Further, Respondent creates this confusion to merely resolve to inactive webpages. See Compl. Ex. 8. Finally, Respondent clearly had actual and constructive knowledge of Complainant’s MORGAN STANLEY mark given Complainant’s prior use of the mark many years prior to Respondent registering the domain names in numerous countries around the world, coupled with the confusing similarity of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <morganstanleycrypto.com>, <morganstanleybitcoin.com>, <morganstanleyeth.com>, <morganstanleybtc.com>, and <morganstanleycryptocurrency.com> domain names on October 30, 2017.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 Panel finds that the disputed domain names are confusingly similar to the Complainant’s valid and subsisting trademark. Complainant has adequately pled its rights and interests in and to the trademark MORGAN STANLEY. Respondent arrives at the various disputed domain names by merely adding generic words to this mark in its entirety. This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no license, right or permission to register the disputed domain names. Respondent is not commonly known by the disputed domain names. Further, it appears that Respondent registered the domain names to take advantage of and intentionally trade on the goodwill associated with Complainant’s mark to merely resolve to inactive webpages. Intending to trade off on the good will associated with a complainant’s mark and failing to make active use of confusingly similar domain names shows a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant provides screenshots of the resolving domains, all of which display the message “website coming soon! Please check back soon to see if the site is available.” See Compl. Ex. 8. Accordingly, the Panel finds that Respondent attempts to divert users to its own websites while failing to actively use the domain names, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant argues that Respondent registered and uses the disputed domain names in bad faith by disrupting Complainant’s business with the intent to deceive Internet users in regard to the source or affiliation of the domain names. Using a confusingly similar domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant shows bad faith under Policy ¶¶ 4(b)(iii) & (iv), even when a respondent does not actively use the domain names. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). As noted previously, Complainant provides screenshots of the resolving domains, all of which display the message “website coming soon! Please check back soon to see if the site is available.” See Compl. Ex. 8. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to trade off the good will associated with Complainant’s mark. As such, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent inactively holds the domain name in bad faith under Policy ¶ 4(a)(iii). Inactively holding a confusingly similar domain name can evince bad faith registration and use. 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).”). The screenshots provided by Complainant confirm that Respondent does not contain any substantive material on the resolving webpages for any of the domain names. See Compl. Ex. 8. The Panel finds that Respondent does not actively use the domain names, and thus registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s MORGAN STANLEY mark. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had prior actual knowledge of the MORGAN STANLEY mark and Complainant’s interests in and to that trademark.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the Complainant’s trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <morganstanleycrypto.com>, <morganstanleybitcoin.com>, <morganstanleyeth.com>, <morganstanleybtc.com>, and <morganstanleycryptocurrency.com> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: December 29, 2017
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