Morgan Stanley v. Robert Zuclich
Claim Number: FA1802001770763
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Robert Zuclich (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cryptomorganstanley.com>, registered with GoDaddy.com, LLC.
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 February 7, 2018; the Forum received payment on February 7, 2018.
On February 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cryptomorganstanley.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2018 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@cryptomorganstanley.com. Also on February 8, 2018, 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 March 1, 2018, 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 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). Respondent’s <cryptomorganstanley.com> domain name is confusingly similar to Complainant’s mark as it appends the generic or descriptive term “crypto” and the “.com” generic top-level-domain (“gTLD”) to Complainant’s wholly incorporated mark.
Respondent has no rights or legitimate interests in the <cryptomorganstanley.com> domain name. 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 fails to make an active use of the disputed domain name. Respondent offers the disputed domain name for sale.
Respondent registered and uses the <cryptomorganstanley.com> domain name in bad faith. Respondent offers to sell the disputed domain name. Respondent fails to make an active use of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MORGAN STANLEY mark through registration with the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). Respondent’s <cryptomorganstanley.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <cryptomorganstanley.com> domain name on January 12, 2018.
Respondent has no rights or legitimate interests in the <cryptomorganstanley.com> domain name. Respondent fails to make an active use of the disputed domain name. Respondent offers the disputed domain name for sale.
Respondent registered and uses the <cryptomorganstanley.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) based upon registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . .”).
Respondent’s <cryptomorganstanley.com> domain name is confusingly similar to Complainant’s mark as it appends the generic or descriptive term “crypto” and the “.com” gTLD to Complainant’s wholly incorporated mark.
Respondent has no rights or legitimate interests in the <cryptomorganstanley.com> domain name. Complainant has not authorized Respondent to use its MORGAN STANLEY mark. The WHOIS identifies “Robert Zuclich” as the registrant of the <cryptomorganstanley.com> domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Navistar International Corporation v. N Rahmany, FA 1620789 (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). Accordingly, Respondent is not commonly known by the <cryptomorganstanley.com> domain name under Policy ¶ 4(c)(ii).
Respondent’s <cryptomorganstanley.com> domain name redirects users to a website that lacks any content. Failure to make active use of a confusingly similar domain name shows a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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).”). Respondent’s <cryptomorganstanley.com> domain name fails to resolve to an active website. Therefore, Respondent has failed to use the domain name 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).
Additionally, Respondent offers the <cryptomorganstanley.com> domain name for sale in the amount of $7,500 USD, which well exceeds the costs of domain name registration. Offering a confusingly similar domain name for sale to the public is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA 1614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Therefore, Respondent has failed to provide 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).
Respondent offers the <cryptomorganstanley.com> domain name for sale for $7,500 USD which is beyond the costs of registration. Offering a confusingly similar domain name for sale can evidence bad faith registration. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum Jul. 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name. Inactively holding a confusingly similar domain name shows bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (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 had actual knowledge of Complainant’s MORGAN STANLEY mark when registering the <cryptomorganstanley.com> domain name. Therefore, Respondent registered and used the domain dame in 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).
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 <cryptomorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 10, 2018
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