Morgan Stanley v. Shoval Ben Mordehai / Michael Prytula
Claim Number: FA2112001975795
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Shoval Ben Mordehai / Michael Prytula (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jmorganstanley.com> and <jmorganstanleys.com>, registered with One.com A/S; Wild West Domains, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2021; the Forum received payment on December 3, 2021.
On December 6, 2021; December 8, 2021, One.com A/S; Wild West Domains, LLC confirmed by e-mail to the Forum that the <jmorganstanley.com> and <jmorganstanleys.com> domain names are registered with One.com A/S; Wild West Domains, LLC and that Respondent is the current registrant of the names. One.com A/S; Wild West Domains, LLC has verified that Respondent is bound by the One.com A/S; Wild West Domains, 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 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@jmorganstanley.com, postmaster@jmorganstanleys.com. Also on December 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 December 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute are similarly constructed as each domain name prefixes a letter “j” to the MORGAN STANLEY mark and concludes with “.com.” Each domain is held passively. Further, the domain names were registered on the same day and use the same hosting internet service provider.
While it is possible that the underlying registrants may or may not differ nominally, they clearly appear to be related to, or controlled by, the same person, persons, or entity. Notably, Complainant’s contention that the domain names’ registrants be treated as a single entity in the instant proceeding is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding and collectively will be referred to as Respondent.
A. Complainant
Complainant contends as follows:
Complainant offers a full range of financial, investment, and wealth management services.
Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <jmorganstanley.com> and <jmorganstanleys.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark. Respondent incorporates the mark in its entirety and adds generic letter, “j” and/or “s,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights in the <jmorganstanley.com> and <jmorganstanleys.com> domain names as Respondent is not commonly known by the at-issue domain names nor did Complainant authorize Respondent to use the MORGAN STANLEY mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain names.
Respondent registered and used the <jmorganstanley.com> and <jmorganstanleys.com> domain names in bad faith as Respondent fails to make an active use of the domain names. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark due to the long standing use and fame of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MORGAN STANLEY trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the MORGAN STANLEY trademark.
Respondent holds the at-issue domain names passively.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO trademark registration for its MORGAN STANLEY trademark. Respondent’s national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under 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).”).
Respondent’s <jmorganstanley.com> and <jmorganstanleys.com> domain names each contain Complainant’s MORGAN STANLEY trademark less its domain name impermissible space; both domain names are prefixed with the letter “j” and in one case an “s” is added to the MORGAN STANLEY mark. Both domain names conclude with the top-level domain name “.com.” The differences between either of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either at-issue domain name from Complainant’s MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <jmorganstanley.com> and <jmorganstanleys.com> domain names are each confusingly similar to Complainant’s MORGAN STANLEY mark. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (“Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names does not identify either domain names’ registrant by a name that is suggestive of one of the at-issue domain names and the record before the Panel contains no evidence that tends to prove that either nominal registrant is commonly known by one (or both) of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either <jmorganstanley.com> or <jmorganstanleys.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <jmorganstanley.com> and <jmorganstanleys.com> domain names are each inactive. Respondent’s domain names each fail to address a webpage. Respondent’s passive holding of the at-issue domain names indicates that neither domain name promotes a bona fide offering of goods or services nor legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See also, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing and absent any contrary evidence from Respondent or otherwise, Complainant satisfies its initial burden and conclusively shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent holds each at-issue domain name passively. Respondent’s passive holding of the confusingly similar at-issue domain names indicates Respondent’s bad faith registration and use of such domain names under Policy ¶ 4(a)(iii). 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).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark when it registered <jmorganstanley.com> and <jmorganstanleys.com> as domain names. Respondent’s actual knowledge is evident given the worldwide notoriety of Complainant and its trademark. Respondent’s registration of the two at-issue confusingly similar domain names with knowledge of Complainant’s trademark rights therein shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jmorganstanley.com> and <jmorganstanleys.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 31, 2021
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