Morgan Stanley v. Domain Administrator
Claim Number: FA2206001998681
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domain Administrator (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleypasswords.com>, registered with Sav.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2022; the Forum received payment on June 1, 2022.
On June 1, 2022, Sav.com, LLC confirmed by e-mail to the Forum that the <morganstanleypasswords.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 June 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2022 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@morganstanleypasswords.com. Also on June 2, 2022, 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 July 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant is a New York-based investment bank. Complainant claims rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992). The disputed domain name is confusingly similar because Respondent wholly incorporates Complainant’s mark in the disputed domain, merely adds the term “passwords” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MORGAN STANLEY mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to resolve to a parked webpage that hosts third-party links to Complainant’s competitors. Respondent’s use of the disputed domain name also generates initial interest confusion.
iii) Respondent registered and uses the disputed domain name in bad faith. First, Respondent resolves the disputed domain name to a parked website which provides links to Complainant’s competitors, disrupting Complainant’s business and likely generating click-through revenue for Respondent. Additionally, in a recent decision against Respondent, a panel transferred an infringing domain name—thus Respondent may have established a pattern of bad faith registration. Next, Respondent uses the disputed domain to create initial interest confusion. Furthermore, Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on May 25, 2022.
2. Complainant has established rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992).
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 claims rights in the MORGAN STANLEY mark through its registration with the USPTO (e.g., Reg. No. 1,707,196 registered August 11, 1992). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because it wholly incorporates Complainant’s mark and is merely followed by the term “passwords” before also adding the “.com” gTLD. The addition of a generic or descriptive term and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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 lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the MORGAN STANLEY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the 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 mark 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 lists the registrant as “Domain Administrator” and there is no other evidence to suggest that Respondent was authorized to use the MORGAN STANLEY mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent has previously used the disputed domain name as a parking website which hosts third-party links to competitors of Complainant. Such a use is generally not considered to be a bona fide offering of goods of services nor a legitimate noncommercial or fair use. See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name showcasing third-party links being hosted. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant asserts that the disputed domain name resolves to a webpage on which third-party advertisements and links of Complainant’s competitors are hosted. Hosting hyperlinks that compete with a complainant may be evidence of bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant has provided a screenshot of the disputed domain name’s resolving website, which contains links to third-party business offering financial services related to Complainant’s services as well as other services. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a registered/well-known mark into and use of a disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel notes that the MORGAN STANLEY mark is fully incorporated into the disputed domain name, while the resolving website contains links to third-party business offering financial services related to Complainant’s services. Therefore, the Panel infers, due to the fame of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark, and thus it finds Respondent registered the disputed domain name in bad faith under 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 <morganstanleypasswords.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 6, 2022
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