DECISION
Morgan Stanley v. DAVID GARRETT
Claim Number: FA2310002065951
PARTIES
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moronstanley.com>, registered with DreamHost, LLC.
PANEL
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.
Darryl C. Wilson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 12, 2023; Forum received payment on October 12, 2023.
On October 12, 2023, DreamHost, LLC confirmed by e-mail to Forum that the <moronstanley.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 October 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@moronstanley.com. Also on October 13, 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.
A timely Response was received and determined to be complete on October 30, 2023.
On October 30, 2023, an Additional Submission was received from the Complainant.
On October 31, 2023, an Additional Response was received from the Respondent.
On October 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant Morgan Stanley 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 owns registrations for its MORGAN STANLEY marks for financial services and related goods and services in countries all over the world, including in the U.S. (e.g., 1707196 and 4470389). Complainant is the owner of the domain name <morganstanley.com>, as well as thousands of variations thereof across a broad spectrum of gTLDs and ccTLDs.
The disputed domain name incorporates Complainant's MORGAN STANLEY marks in whole, and therefore must be deemed virtually identical or confusingly similar to Complainant's registered marks. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY mark or the disputed domain name. Respondent should be considered as having no rights or legitimate interests in respect of the domain name.
The disputed domain name has resolved to a site that purports to offer information regarding stock trading strategies and personal finance, and investment guides, under the company name and mark "Moron Stanley," which is confusingly similar to Complainant's marks, and is being used in connection with offering goods and/or services that are similar or closely related to Complainant's own. Respondent's use and registration of the disputed domain name disrupts the business of Complainant, which is additional evidence of bad faith use and registration. On information and belief Respondent's website contains malware which further indicates Respondent's bad faith registration and use.
B. Respondent
Respondent states, "I did not register the domain with the intent to make money off of the complainant's name. I did it because it was a funny sounding name and I wanted something similar to the Motley Fool. And it was available." Respondent also states "…. I was aware of the complainant's name when I chose the domain. I did not choose it because of the complainant's name or to confuse people. I chose it because it sounded funny. In one of the exhibits provided, it shows my name in the same font as theirs. That is true…. I was aware that the complainant more than likely had trademarked their name at the time that I registered the domain. However, it was my belief that the trademark for Morgan Stanley would not apply to Moron Stanley nor would it apply to Manly Stanley or Moronica Stanley or MissStanley or similar names."
Respondent further contends that his belief is that the disputed domain chosen name was allowed and that his intention is to create a news website solely run by AI which is probably over a year away from completion. Respondent indicates that "Most of what is on the site is just filler. Financial news seemed a good way to go….".
C. Additional Submissions
Complainant's additional submission emphasized Respondent's admissions confirming Complainant's assertions as to each of the required elements necessary to find in Complainant's favor in this proceeding. Specifically the similarity of the domain name with Complainant's mark, Respondent's knowledge of the registered mark, Respondent's deliberate use of similar financial information on the resolving website, and the lack of any authorization from Complainant allowing Respondent to use its mark.
Complainant also asserted that Respondent could provide no legitimate basis for registering the disputed domain name, other than to take advantage of the fame in the mark for his own benefit. See Morgan Stanley v. Morgan Stanley Latin America, LLC, DRS 3070 (Nominet Dec. 15, 2005) ("Given the strong reputation of the 'Morgan Stanley' name and business, and based on the facts and circumstances set out in the Complaint, I cannot think of any justification for the Respondent's registration or use of the Domain Name").
Respondent's additional submission reiterated Respondent's denial that its resolving website contained any malware. Respondent supported the denial by stating that testing had been done and no malware or security issues were found for the moronstanley.com domain. Respondent also asserted that the website was not intended to look similar to Complainant's nor does it, noting that Respondent had modified the content and appearance of the site since the institution of the instant proceedings. Respondent claimed that Complainant's exhibits reflected the website while it was under heavy construction. Respondent also stated that "I believe since I removed the offending logo, rather than keep it, shows that I had no malicious intent toward the complainant."
FINDINGS
Complainant is Morgan Stanley ("Complainant"), of New York, NY, USA. Complainant is the owner of domestic and global registrations for the mark MORGAN STANLEY which it has used continuously since at least as early as 1935 in connection with its provision of financial products and services. Complainant also owns numerous domain name registrations including <morganstanley.com> which it has used continuously since at least as early as 1996. Complainant never authorized Respondent to use its mark.
Respondent is David Garrett ("Respondent"), of Knoxville, TN, USA. Respondent's registrar's address is indicated as Brea, CA, USA. Respondent registered the <moronstanley.com> domain name on or about July 23, 2023. Respondent was aware of Complainant's registered mark but registered the disputed domain originally resolving to a website that used typeset, logos, and financial information identical or confusingly similar to that of Complainant allegedly because Respondent thought it was funny.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
Identical and/or Confusingly Similar
Complainant asserts rights in the mark MORGAN STANLEY based upon registration with the USPTO (see USPTO Reg. No. 1707196, registered August 11, 1992). Registration of a mark with the USPTO sufficiently establishes rights in the mark. 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)."). The Panel here finds that Complainant has established rights in the Marks under Policy ¶ 4(a)(i).
Complainant claims that Respondent's <moronstanley.com> domain name is identical or confusingly similar to Complainant's MORGAN STANLEY mark. Typographical errors as well as the addition of a gTLD is insufficient to distinguish a domain name. See Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant's GOOGLE mark and noting that "[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error"); see also Morgan Stanley v. Above.com Domain Privacy, FA 1366174 (Forum Feb. 14, 2011) (omission of letter "m" from complainant's MORGAN STANLEY mark did not obviate confusion from domain name ORGANSTANLEYCLIENTSERV.COM).
Respondent acknowledges that the domain name was adopted and resolved to a website using the same and/or similar material as Complainant's marks and materials.
The Panel here finds that the domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that 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 has made out a prima facie case here.
Complainant argues Respondent has no rights or legitimate interests in the <moronstanley.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use its MORGAN STANLEY mark. Where WHOIS information suggests a respondent is not commonly known by a disputed domain name, if there is no further evidence to the contrary, Panels have found a respondent is not commonly known by the disputed domain name. See SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY'S name). Further, when there is no evidence to indicate a complainant has authorized the use of a mark, the lack thereof further supports a conclusion that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest. 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)"); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the disputed domain name indicates the registrant as Proxy Protection LLC. No evidence was provided to indicate that Respondent is in fact known by that name or the disputed domain name. There is also no evidence to suggest Respondent was authorized, licensed, or otherwise permitted to use Complainant's mark.
Respondent states in its submissions that, despite his awareness of Complainant's registered mark, Respondent did not think Complainant's mark would apply to the domain name.
The Panel here finds Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Registration and Use in Bad Faith
Complainant asserts that Respondent registered and uses the <moronstanley.com> domain name in bad faith. Complainant additionally argues Respondent intended to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites, which is evidence of bad faith under Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant's business. "Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant."). Here, Complainant provides screenshots of the initial resolving website that indicate Respondent's advertisement of products and services identical or similar to those sold by Complainant.
Respondent does not deny having originally established a website similar to Complainant's website including use of Complainant's mark without authorization. Respondent admits doing so with full knowledge of Complainant and Complainant's registered mark. However Respondent, apparently operating without knowledgeable legal assistance, misstates the scope of protection for Complainant's mark relative to the domain name and resolving website. Respondent registered and used the domain in question based on the misunderstanding that a domain name's availability, subjective comedic qualities, or a prospective registrant's purported non-malicious intentions allow registration despite the domain name being identical or confusingly similar to a complainant's registered mark. Respondent's assumptions are simply untrue. Respondent's actions constitute bad faith registration and use under the applicable rules. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant's well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith); 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).
The Panel here finds that Respondent raises no credible arguments regarding Policy ¶ 4(a)(iii). The Complainant has proven this element.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that Complainant's requested relief shall be GRANTED.
Accordingly, it is Ordered that the <moronstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 13, 2023
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