Morgan Stanley v. Thomas Tucker
Claim Number: FA2306002049804
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Thomas Tucker (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <themorganstanley.org> and <themorganstanley.online>, registered with IONOS SE.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 20, 2023; Forum received payment on June 20, 2023.
On June 22, 2023, IONOS SE confirmed by e-mail to Forum that the <themorganstanley.org> and <themorganstanley.online> domain names are registered with IONOS SE and that Respondent is the current registrant of the names. IONOS SE has verified that Respondent is bound by the IONOS SE 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 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2023 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@themorganstanley.org, postmaster@themorganstanley.online. Also on June 22, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
A. Complainant
Complainant made the following contentions.
Complainant, Morgan Stanley, offers financial, investment, and wealth management services. Complainant asserts rights to the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. reg. no. 1,707,196, registered August 11, 1992). Compl. Ex. 6. Respondent’s <themorganstanley.org> and <themorganstanley.online> domain names are confusingly similar to Complainant’s mark as they contain the MORGAN STANLEY mark in its entirety, merely adding the generic term “the” and the generic top-level domains (gTLDs”) “.org” and “.online” to form the disputed domain names.
Respondent does not have rights or legitimate interests in the <themorganstanley.org> and <themorganstanley.online> domain names. Respondent is not licensed or authorized to use Complainant’s MORGAN STANLEY mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent does not use the disputed domain names for any active use.
Respondent registered and uses the <themorganstanley.org> and <themorganstanley.online> domain names in bad faith. Respondent does not use the disputed domain names for any active use and the lack of evidence that it does use them for an active use may show bad faith registration and use. Additionally, Respondent registered and uses the disputed domain names to create initial interest confusion. Finally, Respondent registered and uses the disputed domain names with constructive and/or actual knowledge of Complainant’s rights in the MORGAN STANLEY mark, showing bad faith registration of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers financial, investment, and wealth management services.
2. Complainant has established its rights to the MORGAN STANLEY mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. reg. no. 1,707,196, registered August 11, 1992).
3.Respondent registered the <themorganstanley.org> and <themorganstanley.online> domain names on June 7, 2022.
4. Respondent does not use the disputed domain names for any active use.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the MORGAN STANLEY mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. reg. no. 1,707,196, registered August 11, 1992). Compl. Ex. 6. Registration of a mark with the USPTO demonstrates rights in such a mark 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).”). Here, the Complainant has provided evidence of its registration of the MORGAN STANLEY mark with the USPTO. Therefore, as the Panel agrees, it finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant contends that Respondent’s <themorganstanley.org> and <themorganstanley.online> domain names are confusingly similar to Complainant’s mark. The addition of a generic term and a gTLD to a mark does not sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain names contain the MORGAN STANLEY mark in its entirety, merely adding the generic term “the” and the “.org” and “.online” gTLDs to form the disputed domain names. Thus, the Panel finds that the disputed domain names are confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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)).
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY mark and to use it in its domain names, adding the generic term “the” and the “.org” and “.online” gTLDs which cannot negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <themorganstanley.org> and <themorganstanley.online> domain names on June 7, 2022;
(c) Respondent does not use the disputed domain names for any active use;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <themorganstanley.org> and <themorganstanley.online> domain names as Respondent is not licensed or authorized to use Complainant’s MORGAN STANLEY mark and is not commonly known by the disputed domain names. 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 State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names lists the registrant as “Thomas Tucker.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <themorganstanley.org> and <themorganstanley.online> domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent does not use the disputed domain names for any active use. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). As support, Complainant provides printouts of the disputed domain names’ resolving websites that do not resolve to active websites. See Compl. Ex. 8. As such, the Panel finds Respondent does not use the disputed domain names for any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent uses the disputed domain names per Policy ¶ 4(a)(iii). In that regard, a Panel may look at the totality of the circumstances to establish bad faith. 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).
Secondly, Complainant submits that Respondent registered and uses the <themorganstanley.org> and <themorganstanley.online> domain names in bad faith as Respondent does not use the disputed domain names for any active use, which may be used as evidence showing bad faith registration and use. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides printouts of the disputed domain names’ resolving websites that do not resolve to active websites. See Compl. Ex. 8. Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent registered and uses the <themorganstanley.org> and <themorganstanley.online> domain names to create initial interest confusion. The use of a disputed domain name that would lead people to believe that the domain name was connected with a complainant is equivalent to bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Here, Complainant points to the use of its MORGAN STANLEY mark in the disputed domain names, and the strong reputation and fame of its mark. See Compl. Ex. 2; Compl. Ex. 3; Compl. Ex. 5. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent registered and uses the <themorganstanley.org> and <themorganstanley.online> domain names with constructive and/or actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Constructive knowledge is generally not regarded as showing bad faith registration by itself. 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.”). However, actual knowledge will suffice for this purpose. The Panel will therefore consider whether actual knowledge has been shown in this proceeding to establish whether Respondent had actual knowledge of Complainant's rights. 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).”). In support, Complainant points to its prior use of the MORGAN STANLEY mark before Respondent’s registration of the disputed domain names and the fame of its mark around the world. See Compl. Ex. 2-7. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <themorganstanley.org> and <themorganstanley.online> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 23, 2023
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