Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc
Claim Number: FA1805001785347
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Francis Mccarthy / Baltec Marine Llc (“Respondent”), represented by Deborah Branch of Baltec Marine Llc, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <morganstonley.com> and <morganstainley.com>, registered with Cronon AG.
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.
Charles A. Kuechenmeister as Panelist
Complainant submitted a Complaint to the Forum electronically on May 7, 2018; the Forum received payment on May 7, 2018.
On May 9, 2018, Cronon AG confirmed by e-mail to the Forum that the <morganstonley.com> and <morganstainley.com> domain names are registered with Cronon AG and that Respondent is the current registrant of the names. Cronon AG has verified that Respondent is bound by the Cronon AG 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 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 31, 2018 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 email@example.com, firstname.lastname@example.org. Also on May 11, 2018, 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 June 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Multiple Domain Names
Paragraph 3(c) of 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.” Complainant argues and presents evidence to the effect that both of the domain names at issue in these proceedings (the “Domain Names”) are registered by the same person or entity. The WHOIS records submitted as Exhibit 7 to the Complaint show that the Domain Names are registered to different persons, one to “Baltec Marine Llc” and the other to “Francis Mccarthy,” but both Domain Names were registered the same day, April 9, 2018, with the same registrar, and both registrants are shown as having the same address and telephone number. Finally, both Domain Names contain similar misspellings of the MORGAN STANLEY mark. On this evidence the Panel finds that both Domain Names are controlled by the same person or entity, and will proceed as to both of them.
Identity of Respondent
The Exhibit 7 WHOIS reports list Baltec Marine Llc (“Baltec”) as the registered owner of <morganstonley.com> and Francis Mccarthy as the registered owner of <morganstainley.com>. Respondent did not submit a Response, but in emails to both the Forum and the Complainant following its receipt of the Complaint, Baltec disclaimed any knowledge of or ownership or other interest in either of the Domain Names. It stated that Francis Mccarthy does not work for it and it does not know who he is. Baltec stated further that it is not opposed to the transfer of the Domain Names. Baltec’s emails are persuasive and the Panel takes them as true. The Panel proceeds on the assumption that some person not associated with or controlled by Baltec registered the Domain Names, one of them in the name of Baltec. Notwithstanding the registration of the <morganstonley.com> Domain Name in Baltec’s name, and notwithstanding Baltec’s stated desire not to oppose the transfer of the Domain Names, if, as it says, it is not the real party in interest as to either Domain Name, it lacks authority to consent to a transfer, and a full UDRP analysis is necessary to resolve this matter. References to “Respondent” in the following Findings and Decision refer to the person who actually registered the Domain Names and not to Baltec.
Complainant offers a full range of financial, investment, and wealth management services, and has been a publicly traded company listed on the New York Stock Exchange since 1986. Complainant has rights in the MORGAN STANLEY mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No 1,707,196, registered Aug. 11, 1992). Respondent’s <morganstonley.com> and <morganstainley.com> Domain Names are confusingly similar to Complainant’s MORGAN STANLEY mark, as both incorporate Complainant’s mark, varying it only by subtle misspellings, eliminating spaces between the words, and adding the generic top-level domain (“gTLD”) “.com.” These changes are not sufficient to distinguish them from Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized or licensed Respondent to use the MORGAN STANLEY mark in any manner. Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or for any legitimate or fair use. Rather, the Domain Names resolve to error pages stating “The requested URL / was not found on this server”. This inactive use of the Domain Names has been held to indicate a lack of rights or legitimate interests. Finally, Respondent’s use of typosquatting further evidences its lack of rights or legitimate interests in the Domain Names at issue.
Respondent registered and is using the Domain Names in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Additionally, Respondent registered the Domain Names with full knowledge of Complainant’s rights in the MORGAN STANLEY mark. Respondent’s failure to make an active use of the Domain Names is further evidence of bad faith. Finally, Respondent’s typosquatting is further evidence of his prior knowledge of Complainant’s rights and of bad faith registration and use.
As noted above, Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant registered its MORGAN STANLEY mark with the USPTO (Reg. No. 1,707,196) on August 11, 1992. See, Complaint Exhibit 6. This registration is sufficient to demonstrate Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i.). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) “.com.” These changes are insufficient to distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”).
Based upon the forgoing, the Panel finds that the Domain Names are confusingly similar to the MORGAN STANLEY mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized Respondent to use its mark for any purpose whatever, (ii) Respondent is not commonly known by either of the Domain Names, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web site resolving from them is inactive. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Exhibit 7, the Domain Name <morganstonley.com> is registered to “Baltec Marine LLC,” and the Domain Name <morganstainley.com> is registered to “Francis Mccarthey.” Neither of these names bears any resemblance to the Domain Names. This is competent evidence that Respondent is not commonly known by the any of the Domain Names. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use its MORGAN STANLEY mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, both Domain Names resolve to a web site that shows the words, “Not Found, The requested URL / was not found on this server.” See, Complaint Exhibit 7. 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). George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Names resolve to an error page and are not being actively used is also evidence of bad faith registration and use. As noted by another panel several years ago, given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. 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), 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).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum December 13, 2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
Complainant asserts that Respondent registered and is using the Domain Names to divert users, presumably for commercial gain, which is evidence of bad faith under Policy ¶ 4(b)(iv). A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site may be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). In this case, the web site resolving from the Domain Names is inactive, and there is no evidence before the Panel of any commercial gain currently being generated from this use, but again, the list of circumstances in Policy ¶ 4(b) is not exclusive. The fact that Respondent incorporated Complainant’s MORGAN STANLEY mark so obviously into the Domain Names is ample evidence that he is intentionally attempting to attract Internet users to his web site by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. The Domain Names were registered less than a month prior to the filing of the Complaint in this matter (See, Complaint Annex A), and it may be that Respondent intends in the future to initiate some kind of for-profit use of the Domain Names. Nevertheless, even without the revenue factor present at this time, the obvious copying of Complainant’s registered mark in these Domain Names is sufficient evidence of bad faith registration and use for the purposes of Policy ¶ 4 (a)(iii). Red Bull GmbH v. Gutch, WIPO Case No. 2000-0766 (September 21, 2000) (finding bad faith registration and use where respondent’s domain name incorporated complainant’s mark verbatim but respondent had not yet activated the resolving web site).
Further, according to the USPTO registration statement for the MORGAN STANLEY service mark (Reg No. 1,707,967) attached to the Complaint as Exhibit 6, Complainant has used that mark since May 1935. Given that fact and Complainant’s world-wide fame in the financial services industry, it is clear that Respondent knew of Complainants’ marks when it registered the Domain Names in April 2018. See, Complaint Exhibit 7. Indeed, it is evident that Respondent registered them precisely because they do contain Complainant’s mark and would likely attract Internet traffic to his sites. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See 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). Respondent clearly knew of Complainant and its marks when he registered the Domain Names, and this is clear evidence of bad faith registration.
Finally, Respondent has engaged in typosquatting, which in itself supports a finding of bad faith under the Policy. Typosquatting consists of intentionally misspelling a domain name in a manner that causes it to appear at first glance to be the complainant’s mark but is nevertheless slightly different, and this is independent evidence of bad faith. Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Respondent’s misspellings of the “Stanley” term in Complainant’s marks is clear evidence of intent to deceive, and constitutes evidence of bad faith registration and use.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstonley.com> and <morganstainley.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 8, 2018
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