DECISION

 

Morgan Stanley v. Alberto Beline

Claim Number: FA2404002095482

PARTIES

Complainant is Morgan Stanley ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Alberto Beline ("Respondent"), Moldova.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <morganstanley-stellar.com>, registered with Name.com, Inc.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 29, 2024; Forum received payment on April 29, 2024.

 

On April 30, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <morganstanley-stellar.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2024 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@morganstanley-stellar.com. Also on May 1, 2024, 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 May 22, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, Morgan Stanley, offers various financial services. Complainant has rights in 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). The disputed domain name is confusingly similar to Complainant's mark because it contains the MORGAN STANLEY mark merely adding the descriptive or generic term "stellar" (a type of cryptocurrency) and the generic top-level domain name ("gTLD") ".com" to form the disputed domain name.

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant's MORGAN STANLEY mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name redirected to the homepage of Complainant's official website, in a clear effort to mislead consumers to believe mistakenly that the disputed domain name is associated with Complainant and its services.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to impersonate Complainant and disrupt Complainant's business. Respondent's attempts to impersonate and pass itself off as Complainant by resolving the domain name to Complainant's official website is strong evidence of bad faith use and registration of the disputed domain name. Respondent had constructive or actual knowledge of Complainant's rights in the MORGAN STANLEY mark at the time of registering the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on April 21, 2024.

 

2. Complainant has established rights in the MORGAN STANLEY mark based upon registration with the USPTO (e.g., reg. no. 1,707,196, registered August 11, 1992). 

 

3. The disputed domain name redirected to the homepage of Complainant's official website.

 

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.

 

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.").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the MORGAN STANLEY mark based upon registration with the USPTO (e.g., reg. no. 1,707,196, registered August 11, 1992). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i).  Since Complainant has provided evidence of registration of the MORGAN STANLEY mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name <morganstanley-stellar.com> is confusingly similar to Complainant's mark because it incorporates Complainant's mark in its entirety merely adding a descriptive or generic term "stellar" and the gTLD ".com" to form the disputed domain name. The addition of generic or descriptive terms and gTLDs to a mark does not distinguish the disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i). The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant's MORGAN STANLEY mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 claims Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not licensed or authorized to use Complainant's MORGAN STANLEY mark and is not commonly known by the disputed domain name. 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, FA 1613011 (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 name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (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 unmasked WHOIS information for the disputed domain name lists the registrant as "Alberto Beline." Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name redirected to the homepage of Complainant's official website, in a clear effort to mislead consumers to believe mistakenly that the disputed domain name is associated with Complainant and its services. Complainant has provided a screenshot of the disputed domain name's resolving website. The Panel finds that the use of the disputed domain name to impersonate Complainant or pass Respondent off as Complainant by redirecting Internet users to Complainant's website without Complainant's authorization does not constitute bona fide offering of goods or services, nor any legitimate non-commercial or fair use. See Morgan Stanley v. Doniqish Doniqish, FA 1898199 (Forum June 24, 2020) ("Redirecting Internet users to the Complainant's website without the Complainant's authorization is not bona fide use or legitimate noncommercial fair use"); see also Direct Line Ins. plc v. Low-cost-domain, FA1337658 (Forum Sept. 8, 2010) ("The Panel finds that using Complainant's mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant's actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(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.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Complainant points out that Respondent impersonates Complainant by redirecting Internet users to Complainant's website without Complainant's authorization. The Panel finds that the use of the disputed domain name to redirect Internet users to Complainant's website is likely to allow Respondent to divert future users to competing websites after having built up mistaken confidence in the source of the content thereby disrupting Complainant's business. See Morgan Stanley v. Doniqish Doniqish, FA 1898199 (Forum June 24, 2020) ("Redirecting a domain name containing the Complainant's trade mark to the Complainant's own web site in these circumstances is bad faith registration and use."); see also Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) ("When a domain name is used to redirect to the complainant's website, that "such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content," which constitutes bad faith registration and use."). Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).

 

Complainant further contends Respondent registered the disputed domain name in bad faith as Respondent was aware of Complainant's MORGAN STANLEY mark when he or she chose and registered the disputed domain name. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant's rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). The Panel notes that with offices in over 40 countries, and over 80,000 employees worldwide, Complainant offers global access to financial markets and advice. Complainant has used marks containing or comprising MORGAN STANLEY in connection with various financial and related services since at least as early as 1935, and the marks remain in wide-spread use today worldwide. In 2020, Complainant had net revenues of over US$ 48,000,000,000. Complainant has ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for at least the past five years, and was ranked numbers 33 and 34, respectively, in Brand Finances 2019 and 2020 Banking 500 global brands. As such, Complainant's mark is considered as being a well-known and reputable trademark. The Panel infers, due to the notoriety of Complainant's mark and Respondent's manner of use of the disputed domain name that Respondent registered the disputed domain name with knowledge of Complainant's rights in MORGAN STANLEY mark, which constitutes bad faith registration per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <morganstanley-stellar.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: May 23, 2024