Morgan Stanley v. kajonrsak chaichit
Claim Number: FA1812001821861
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is kajonrsak chaichit (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgasntanley.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2018; the Forum received payment on December 19, 2018.
On December 19, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <morgasntanley.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 December 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2019 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@morgasntanley.com. Also on December 20, 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 January 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <morgasntanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morgasntanley.com> domain name.
3. Respondent registered and uses the <morgasntanley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, uses the MORGAN STANLEY mark in connection with financial services, and holds a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196, registered Aug. 11, 1992).
Respondent registered the <morgasntanley.com> domain name on December 5, 2018, and uses it to pass off as Complainant in furtherance of a phishing scheme, and to compete with Complainant.
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 Complainant’s registration of the MORGAN STANLEY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the MORGAN STANLEY mark (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992).
Respondent’s <morgasntanley.com> domain name incorporates the MORGAN STANLEY mark, switches the middle letters “n” and “s,” deletes the spaces, and adds the gTLD “.com.” These changes do not sufficiently distinguish a domain name from a mark. See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.). Accordingly, the Panel finds that Respondent’s <morgasntanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <morgasntanley.com> domain name, and is not commonly known by the domain name. Complainant has not authorized Respondent to use the MORGAN STANLEY mark in any way. The WHOIS information of record identifies the owner of the disputed domain name as “kajonrsak chaichit.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <morgasntanley.com> domain name. 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); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <morgasntanley.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate or noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Complainant contends that Respondent attempts to pass off as Complainant in order to further a phishing scheme. The use of a disputed domain name to pass off as complainant and phish for Internet users’ personal information is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant provides screenshots of emails associated with the phishing scam. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that the <morgasntanley.com> domain name resolves to a website which is being used to obtain click-through revenue by linking to competitors’ websites. The use of a domain name to host a page for third-party links is also not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations action gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the webpage associated with the <morgasntanley.com> domain name featuring multiple links for competing credit card companies. The Panel therefore finds that Respondent has no rights or legitimate interests in the <morgasntanley.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has engaged in typosquatting, or intentionally misspelling a mark in a domain name. The Panel notes that Respondent switches the middle letters “n” and “s” contained in the MORGAN STANLEY mark. The Panel finds that this constitutes typosquatting, and is further evidence that Respondent lacks rights and legitimate interests in the <morgasntanley.com> domain name under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s bad faith is indicated by its use of the <morgasntanley.com> domain name to link to third party websites, some of which compete with Complainant. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Accordingly, the Panel finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent’s bad faith is indicated by its use of the <morgasntanley.com> domain name to pass off as Complainant to further a phishing scheme. Use of a domain name to pass off as a complainant to phish for Internet users’ personal information constitutes faith per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s bad faith is also indicated by typosquatting Complainant’s mark. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”).
Complainant further asserts that Respondent’s use of the confusingly similar domain name to attract Internet users to its own competing webpage indicates that it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morgasntanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 13, 2019
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