Morgan Stanley v. Keens Truck
Claim Number: FA2004001890757
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondent is Keens Truck (“Respondent”), Kentucky.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <m0rganstanleys.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2020; the Forum received payment on April 2, 2020.
On April 2, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <m0rganstanleys.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 April 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2020 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@m0rganstanleys.com. Also on April 2, 2020, 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 April 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a U.S. multinational investment bank and financial services company. Complainant has rights in the MORGAN STANLEY trademark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 1,707,196, registered on Aug. 11, 1992). Respondent’s <m0rganstanleys.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY trademark as it incorporates the trademark in its entirety, merely misspelling the trademark by adding a letter “s,” replacing the letter “o” with the number “0,” and adding a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <m0rganstanleys.com> domain name. Respondent is not licensed or authorized to use Complainant’s MORGAN STANLEY trademark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent engages in typosquatting and does not use the disputed domain name to resolve to an active website.
Respondent registered and uses the <m0rganstanleys.com> domain name in bad faith. Specifically, Respondent is typosquatting and inactively holding the disputed domain name. Any active use of the disputed domain dame is likely to cause confusion among internet users. Finally, Respondent is presumed to have had constructive knowledge of Complainant’s trademarks at the time Respondent registered the confusingly similar domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,707,196 MORGAN STANLEY (word), registered August 11, 1992 for services in class 36; and
No. 4,470,389 MORGAN STANLEY (word), registered January 21, 2014 for goods in classes 9 and 16.
The disputed domain name <m0rganstanleys.com> was registered on March 20, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the MORGAN STANLEY trademark based on registration with the USPTO. Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registrations of the MORGAN STANLEY trademark (e.g., Reg. No 1,707,196, registered on Aug. 11, 1992). Accordingly, the Panel find that Complainant has established rights in the MORGAN STANLEY trademark for the purposes of Policy ¶ 4(a)(i).
The Complainant next argues that Respondent’s <m0rganstanleys.com> domain name is identical or confusingly similar to Complainant’s trademark as it includes the trademark in its entirety, just merely misspelling the trademark by adding a letter “s” and replacing the letter “o” with the number “0,” and adding a “.com” gTLD. The addition of a common misspelling and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)).
In the present case, the Panel note that the letter “o” and the number “0” are close to each other on a traditional keyboard, as well as they are visually similar, and just adding a letter “s” at the end makes no other difference than indicating the genitive form of the Complainant’s trademark. The Panel therefore find that the disputed domain name is confusingly similar to the MORGAN STANLEY trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Respondent has no rights or legitimate interests in the <m0rganstanleys.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the MORGAN STANLEY trademark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See 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)”). The WHOIS information for the disputed domain name in this case lists the registrant as “Keens Truck,” and there is no other evidence to suggest that Respondent was authorized to use the MORGAN STANLEY trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent fails to use the <m0rganstanleys.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends instead that the domain name does not resolve to an active website. Such use may not be a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services . . . As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”); see also 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). Complainant provides a screenshot of the disputed domain name’s resolving webpage, which displays a “403 - Forbidden Error” message. Therefore, the Panel find that Respondent does not use the disputed domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Furthermore, Complainant argues that Respondent is typosquatting. Capitalizing on Internet users’ mistakes, or typosquatting, may demonstrate lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Here, Complainant argues that Respondent uses a common misspelling of Complainant’s trademark and attempts to target Internet users who make typographical errors. The Panel agree with the Complainant’s conclusion, and find that Respondent lacks rights and legitimate interest in the disputed domain name per Policy ¶ 4(a)(ii).
The Panel find that while the Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy - so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore find that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY trademark at the time of registration of the <m0rganstanleys.com> domain name based on Respondent’s use of the trademark in connection with a typosquatting. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find 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.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent engages in typosquatting and fails to use the disputed domain name for any purpose, which demonstrates that Respondent had actual knowledge of Complainant’s trademark rights prior to registration. As the Panel already has stated above, the letter “o” and the number “0” are close to each other on a traditional keyboard, as well as they are visually similar, and it is rather obvious that the Respondent had the Complainant’s trademark in mind when registering <m0rganstanleys.com> domain name. The Panel find that Respondent registered and use the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant contends that Respondent does not make active use of the <m0rganstanleys.com> domain name. Inactive holding of a disputed domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Additionally, Complainant contends that Respondent uses a common misspelling of the MORGAN STANLEY trademark and thus engages in typosquatting. Typosquatting may be indicative of bad faith registration and use under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). The Panel agree that Respondent engages in inactive holding and typosquatting and accordingly registered and uses the disputed domain name in bad faith per 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 <m0rganstanleys.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 1, 2020
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