Morgan Stanley v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2104001940479
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msresrved.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2021; the Forum received payment on April 6, 2021.
On April 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <msresrved.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 April 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2021 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@msresrved.com. Also on April 8, 2021, 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 May 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant has rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992).
2. Respondent’s <msresrved.com>[i] domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it abbreviates the MORGAN STANLEY Mark to “MS,” a common acronym for Complainant’s mark, while adding the misspelled term “resrved” and the “.com” gTLD.
3. Respondent lacks rights or legitimate interests in the <msresrved.com> domain name. Respondent was not commonly known by either the MORGAN STANLEY, MS or the domain name and Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY, MS or the domain name.
4. Furthermore, Complainant never authorized Respondent to use the MORGAN STANLEY mark or the <msresrved.com> domain name. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses the domain name in a malware scheme and engaged in typosquatting.
5. Further, Respondent offers the domain name for sale.
6. Respondent registered and uses the <msresrved.com> domain name in bad faith. Respondent has a history of adverse UDRP decisions.
7. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <msresrved.com> domain name and that Respondent registered and uses the 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 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”).
Complainant has rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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.”). Therefore, Complainant has demonstrated rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <msresrved.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it abbreviates the MORGAN STANLEY Mark to “MS,” a common acronym for Complainant’s mark, while adding the misspelled term “resrved” and the gTLD .com. Adding a misspelled descriptive term and a gTLD to an abbreviation of a mark fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the <msresrved.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <msresrved.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <msresrved.com> domain name as Respondent is not commonly known by the MORGAN STANLEY mark and Respondent does not actually engage in any business or commerce under the name MORGAN STANLEY. Furthermore, Complainant never authorized Respondent to use the MORGAN STANLEY mark or the <msresrved.com> domain name. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the <msresrved.com> domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico,” and there is no other evidence in the record to show that Respondent was authorized to use the MORGAN STANLEY mark. Therefore, the Panel holds that Respondent is not commonly known by the <msresrved.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <msresrved.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it in a malware scheme. Using a domain name incorporating the mark of another to spread malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing the <msresrved.com> domain name resolves to a website that attempts to place malware on the Internet user’s computer device by proffering a fake message instructing the user to click “continue” on a “standard security check” that will secretly download adware onto the user’s computer. Therefore, the Panel holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <msresrved.com> domain name in bad faith as Respondent has a history of adverse UDRP decisions and offers the domain name for sale. Prior adverse UDRP decisions and offering a domain name for sale can demonstrate bad faith per Policy ¶¶ 4(b)(i) and 4(b)(ii). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”); see also Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Complainant provides screenshots showing Respondent offers the <msresrved.com> domain name for sale and that Respondent has been found to violate the UDRP in at least 160 prior cases before the Forum, with at least 145 findings of bad faith on the part of Respondent. Therefore, the Panel holds that Respondent registered and uses the <msresrved.com> domain name in bad faith per Policy ¶¶ 4(b)(i) and 4(b)(ii).
Next, Complainant contends Respondent registered and uses the <msresrved.com> domain name in bad faith as Respondent engaged in typosquatting. Per Policy ¶ 4(a)(iii), the purposeful misspelling of a mark constitutes typosquatting which is itself evidence of bad faith. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Complainant contends that Respondent engages in typosquatting because Respondent intentionally misspelled Complainant’s domain name <msreserved.com>, which Complainant uses as the website for its Morgan Stanley Reserved customer loyalty program. Therefore, the Panel holds that Respondent registered and uses the <msresrved.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent registered the <msresrved.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the MORGAN STANLEY mark prior to registration of the domain name based on the famous nature of the mark. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark and show bad faith. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant has provided evidence that is one of the most widely recognized names in the banking industry. Based on the evidence in the record, the Panel agrees with the Complainant that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark when Respondent registered the <msresrved.com> domain name and therefore registered the domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <msresrved.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 17, 2021
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