We hope you will enjoy this edition of the Digest (Vol 3.9), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch.
‣ Panel: Domain Name Investing “Universally Accepted” by UDRP (redfield .com *with Commentary)
‣ Fascinating Case Involving Competing Trademark Rights (billionairebay .com *with Commentary)
‣ Respondent Loves the RDNH Decision, But Publishing His Name, Not so Much (iloveart .com *with Commentary)
‣ Is ‘MrStanleyWin’ Confusingly Similar to ‘Morgan Stanley’ ? (mrstanleywin .com *with Commentary)
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Panel: Domain Name Investing “Universally Accepted” by UDRP
Panelists: Mr. Charles A. Kuechenmeister (Chair), Mr. Gerald M. Levine and Ms. Sandra J. Franklin
Brief Facts: The Complainant is a retailer of sporting goods and outdoor recreation equipment. It owns rights in the REDFIELD mark through its numerous registrations of the mark, including with the USPTO. The Respondent is a domain name investor, who acquired the disputed Domain Name for USD $8,166.67 at a domain name auction on November 28, 2021 and holds it as part of his stock in trade. The Complainant alleges that the Respondent acquired it after the Complainant inadvertently allowed its registration of the Domain Name to lapse and did so with constructive or actual knowledge of the Complainant and its rights in the REDFIELD mark. The Respondent contends that “Redfield” is a commonly used term as a common surname of individuals and name of geographical places and he bought it because of its inherent value as a common-word domain name.
The Complaint exhibits a letter from Complainant’s counsel requesting that the holder sell the disputed Domain Name it to the Complainant for a reasonable price. The Respondent in response explained that he paid USD $8,158 for the disputed Domain Name and considers it a valuable asset. The Complainant offered USD $5,000 for it, which the Respondent declined. The Complainant’s counsel requested the Respondent to furnish a counterproposal and pointed out that its mark had been registered for approximately 100 years. The Respondent did not reply, and that ended the email communication.
The Complainant alleges that the Respondent registered the Domain Name primarily to sell it for more than his direct costs associated with it and refuses to engage in good faith negotiations with the Complainant to purchase the Domain Name despite notice of Complainant’s rights. The Complainant further alleges that the Respondent exhibits a pattern of bad faith, as shown by his ownership of hundreds of domain names and continues to offer the Domain Name for sale for US $49,500 even after the Complainant notified him of its interest in the disputed Domain Name. The Respondent contends that the Complainant was not even willing to pay Respondent the amount of money he paid for the disputed Domain Name and the Respondent was within his rights to continue his general offer to sell it.
Held: The Respondent shows that he is a domain investor, who invests in common-word domain names, which is a perfectly legitimate business. REDFIELD is a common-word mark amply demonstrated by the Respondent and moreover there is no evidence that the Respondent was aware of the Complainant or its mark when it acquired the Domain Name. There is also no evidence of the Respondent using the Domain Name to compete with the Complainant, of impersonation, or of the parties operating in the same market segment or geographic location. In short, there is nothing in the evidence before the Panel to suggest that the Respondent was aware of the Complainant or its REDFIELD mark when he acquired the disputed Domain Name, and thus no evidence of targeting. The Panels have most frequently declined to find bad faith based upon constructive knowledge, whereas the Respondent did not have actual knowledge of the Complainant and its mark when he acquired the disputed Domain Name.
The evidence before the Panel does not demonstrate bad faith within the meaning of the Policy. The Respondent is entitled to make whatever lawful use of it he chooses, and offering it for sale as part of his stock in trade under the circumstances present in this case is entirely within his rights, regardless of Complainant’s claims to the disputed Domain Name. The fact that it is confusingly similar to Complainant’s mark does not alter or diminish this right in any way. Finally, the fact that the Respondent registered numerous names does not demonstrate a pattern of bad faith registrations. The domain names on the lists of those he has registered are common-word names which are part of his stock in trade, his inventory. If anything, the lists support Respondent’s position, demonstrating that he is engaged in the legitimate business of domain investing. It is not evidence of bad faith registration or use.
RDNH: The Complainant and its counsel knew or should have known when they obtained the reverse WHOIS printout from <viewdns .info> that this Respondent was very likely a domain investor and that this business is universally accepted as legitimate by UDRP panels. They also knew or should have known that their REDFIELD mark was relatively weak and in use by many individuals and entities throughout the United States at a minimum. Any reliance they may have placed upon constructive notice of their rights was utterly without justification in light of the almost universal rejection of that theory by UDRP panels, and they had no basis whatsoever to suppose that this Respondent had actual knowledge of them or their rights in the REDFIELD mark.
In short, they had no reason to believe they could prove either the second or third prongs of the Policy. This Complaint should not have been filed and it was an abuse of the UDRP for the Complainant to do so. It is undisputed that the Complainant attempted unsuccessfully to buy the disputed Domain Name from the Respondent in the fall of 2022, and this action followed. For the foregoing reasons the Panel is convinced that the Complainant filed this action in bad faith, perhaps as an alternative acquisition strategy, but in any event without any legal or factual basis for its claims.
Complaint Denied (RDNH)
Complainants’ Counsel: Darin M. Klemchuk of Klemchuk LLP, Texas, USA
Respondents’ Counsel: Ankur Raheja of CyLaw Solutions, India
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations to our stalwart Editor-in-Chief, Ankur Raheja, for successfully representing the Respondent in this case. We should all be thankful for him bringing us his weekly summaries of noteworthy cases and also for his real-time Twitter summaries.
This case may contain the clearest and most emphatic statement yet about domain name investing:
“This business is universally accepted as legitimate by UDRP panels”; and
“Investing in common-word domain names is a perfectly legitimate business and can qualify as a bona fide offering of goods or services so long as the Respondent did not target a specific complainant or protected mark with a particular domain name”.
This constitutes a right and legitimate interest, with the Panel clearing stating that the Respondent’s use of the domain name as part of his stock in trade as an investor, constitutes use “in connection with a bona fide offering of goods or services as contemplated by in Policy” which “entitled [the Respondent] to make whatever lawful use of it he chooses, and offering it for sale as part of his stock in trade under the circumstances present in this case is entirely within his rights, regardless of Complainant’s claims to the Domain Name”. Contrast this decision from the Crew.com decision from 2000, where the majority of the Panel (with Gervaise Davis dissenting) stated that:
“The majority of the Panel does not decide that all speculation in domain names is prevented by the Policy. Rather, for the purpose of this case, we merely hold that registration of domain names for speculative purposes constitutes an abusive registration when (1) the respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name; (2) the respondent had constructive or actual notice of another’s rights in a trademark corresponding to the domain name prior to registration or acquisition of the domain name; (3) the respondent engages in a pattern of conduct involving speculative registration of domain names; and (4) the domain name registration prevents the trademark holder from having a domain name that corresponds to its registered mark.
This definition is consistent with the considerations stated in the WIPO Report and allows speculation in domain names that do not correspond to registered marks or where the registrant has a demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition.”
As the dissenting Panelist noted, this “biased test” where a transfer would result every time a Complainant has a trademark since it “automatically creates a situation, in every case, where there is only one element left to test, if the Complainant has a registered trademark and the domain registered by the Respondent is similar to the Complainant’s registered trademark”. Accordingly, we have come a long way from this erroneous interpretation of the UDRP to the point where domain name investing is “universally” recognized as legitimate under the Policy. If it had not gone in this direction, domain name investing would have been virtually finished off by the UDRP.
The case is also noteworthy for the cautionary warning that the RDNH finding provides. Obtaining the Registrar Verification after filing the Complaint should give Complainants pause as the outcome may change depending on what it reveals. It should not be treated as an unimportant speed bump but rather as an opportunity to revaluate one’s Complaint prior to proceeding further. Many Panelists would lament just how often Complainants do not take care to change anything in their Complaint despite material new information being revealed by the Registrar Verification. Not only is this a lost opportunity for Complainants, but it can also result in RDNH where a Panel finds that a Complainant essentially ignores it despite it revealing a material problem with the Complaint, and proceeds headlong anyhow.
Multi-Problems with this ‘Generic.com’
Panelist: Mr. Aaron B. Newell, ESQ
Brief Facts: The Complainant claims unregistered rights in MULTITRACKS and/or MULTITRACKS .COM and/or rights in the name MULTITRACKS by virtue of US trademark registration for MULTITRACKS CLOUD, which is registered on the Supplemental Register. It uses the aforesaid names and website in connection with a business offering digital music resources for musicians in worship services, including audio tracks for performances and recordings. The Respondent acquired the Domain Name in 2021 and uses it to redirect traffic to loopcommunity .com, where the Respondent offers similar goods and services in competition with the Complainant.
The Respondent contends that the descriptive nature of the term MULTITRACK is a legitimate basis for Respondent’s registration of the domain name, including because the Respondent has used the Domain Name to provide information about multitracks and sell multitracks to consumers. The Respondent adds that the Complainant itself has acted in bad faith by attempting to corner the market and monopolise the “generic term” “multitrack”.
Held: The Complainant has been trading under the MultiTracks.com name for approximately a decade, during which time it has consistently advertised and marketed its business in relevant media, appears to have gained a material degree of recognition under the MultiTracks name (including the MultiTracks.com domain name) such that competing use of the identical or near-identical name as a trademark or other indicator of origin could confuse, mislead and/or deceive consumers that the respective business are the same or are somehow commercially connected. The Panel finds that within the niche market of services for Christian worship leaders or, more specifically, services for providing music for Christian worship leaders, the Complainant is recognised as a market-leading business. While the scope of Complainant’s goodwill and reputation may be limited to a niche market, it does appear to subsist within that niche market, despite any descriptive or generic connotation of the term “multitracks”.
Further, the Panel does not accept that Respondent’s use of the domain name has primarily been informative but rather, Respondent’s conduct was distinctly commercial, as until the Complainant requested that the Respondent cease, the Respondent used the Domain Name to redirect internet traffic to loopcommunity .com, at which it offers goods and services that compete directly with those of the Complainant. Accordingly, the Panel finds it more plausible that the Domain Name was registered as a reference to the Complainant, i.e. to trade off third-party trademark rights, which the Respondent did by way of its redirection. This conduct de-legitimizes any interest that the Respondent claims it may have in the Domain Name as being used legitimately in connection with a bona fide offering of goods and/or services.
Shortly after acquiring Loop Community the Respondent used a domain name broker service to acquire the disputed Domain Name in 2021. The Respondent was almost certainly aware of the Complainant at that time given both parties’ involvement in the worship music industry. The Panel, accordingly, finds that the Respondent acquired the Domain Name primarily in order to redirect website traffic from multitrack .com to loopcommunity .com. This traffic would be likely to include consumers seeking Complainant’s business. Regardless of how described by the Respondent, the removal of the redirection away from loopcommunity .com does not cure Respondent’s prior conduct for the purposes of the assessment under Policy 4(a)(iii). The Respondent’s conduct is both an act of typosquatting and indicative of the bad faith use and registration as set out under the Policy.
Complainants’ Counsel: Alison Frey of Dickinson Wright PLLC, US
Respondents’ Counsel: Keane Barger of LOEB & LOEB LLP, US
Case Comment by ICA General Counsel, Zak Muscovitch: In Digest 2.31, I wrote about Panelist Aaron Newell’s decision in the TampaWaterTaxi case which resulted in the Respondent bringing the case to Federal Court (which we reported in Digest 2.48). The transfer of a domain name corresponding to a common term despite dubious trademark rights is very concerning and unfortunately that is what appears to have also occurred previously in the LiveVideo case, where the same Panelist found unregistered trademark rights in connection with live video streaming services based upon “extensive use” despite the fact that the Complainant had ceased using the Domain Name three years prior. With the present Multitrack case, I am concerned that for the third time, the Panelist ordered the transfer of a “generic .com” domain name despite questionable trademark rights.
Appropriate Use of Procedural Orders
As Gerald Levine notes in his treatise (at Page 576), although Rule 12 grants Panels sole discretion to request further statements of documents from either of the parties by way of procedural orders, “exercising sole discretion raises questions of fairness and it should be exercised cautiously…Incautiously, it can be viewed as giving an unfair advantage to a party who has failed to marshal a full record”. A good example of the appropriate concern when considering requesting additional material from a party, is Panelist Matthew Harris’s decision in Fasthosts Internet Ltd v. Jamie Scott, Smudge It Solutions Ltd, WIPO Case No. D2008-0841, which Mr. Levine cites in his aforementioned treatise. There, Panelist Harris expressly noted “that it is questionable whether it was appropriate for the Panel to have issued the procedural order that it did in this case. It is for a complainant to prove its case and it is not for a panel to do so on a complainant’s behalf”. Another good example is Precyse Corporation v. Punta Barajas, SA, D2002-0753, also cited by Mr. Levine, where Panelist Lyon stated that he had considered using his discretion under Rule 12 to request additional submissions, but had “determined not to do so”, inter alia because “the Policy and the Rules clearly impose on each party an obligation to come forward in the one pleading expressly allowed it with adequate evidence to sustain the legal conclusions it desires…and that sua sponte requests for additional material should be used sparingly”.
In Multitracks, not only did the Panelist accept an unsolicited supplemental submission from each party without explanation and despite the established case law limiting additional submissions to “exceptional cases” (See for example, Viacom v. Rattan Singh Mahon, WIPO Case No. D2000-1440), but the Panel also issued a Procedural Order specifically requesting that the Complainant provide “further evidence in support of its claim to secondary meaning and/or acquired distinctiveness” [emphasis added]. Accordingly, even with two (2) respective pleadings already in hand from each party, the Panelist nevertheless determined that the Complainant had still not satisfactorily demonstrated acquired distinctiveness. Despite the requirement that such requests should only be used sparingly and in exceptional circumstances, the Panel nonetheless gave the Complainant an opportunity to improve upon its case, raising as Mr. Levine noted, a “question of fairness”. An appropriately circumspect Panel may have instead determined that it was for the Complainant to make its own case, and that since it had failed to do so despite already having submitted two pleadings, the case ought to be dismissed. After all, it is a Complainant’s obligation alone to make its case with adequate evidence, and not for a Panel to ensure… CLICK HERE TO CONTINUE READING IT
Fascinating Case Involving Competing Trademark Rights
Panelist: Mr. Nicholas J.T. Smith
Brief Facts: The Complainant offers online marketplace and auction services. The Complainant owns rights to the EBAY mark through various registrations, which includes the USPTO registration dated January 19, 1999. The disputed Domain Name was registered on August 29, 2008. In 2011, the Respondent obtained a French company name registration for BillionareBay (cancelled in 2016) and also acquired a French trademark registration for the trademark BILLIONAIREBAY (cancelled in June 2021). In January 2021, the Respondent obtained a French company name registration for BillionareBay which as of the date of the decision remains active. On November 22, 2021, the Respondent filed a further trademark application for BILLIONAREBAY, which was opposed by the Complainant, in which later was partially successful in respect of a range of services including for auctions and marketplace services, however the Respondent’s BILLIONAREBAY trademark proceeded to registration for the other goods and services for which it was sought to be registered.
The Complainant alleges that the Respondent, in the 14 years of the Domain Name holding, never ran an active website from the Domain Name (as opposed to a landing page suggesting a luxury auction house or online marketplace was forthcoming). The Complaint annexes promotional material from 2017 displayed on third party websites which suggests that the Respondent intended to offer an auction service for wealthy individuals and was aware of the Complainant (the Respondent’s proposed service is described as “the EBAY for the 1%”). The Complainant further alleges that the Respondent had actual knowledge of Complainant’s rights in the EBAY mark and it capitalizes on the goodwill by purporting to offer competing services, an example of opportunistic bad faith. The Respondent did not participate in these proceedings.
Held: The fundamental issue in this proceeding is that a respondent has rights or legitimate interests in a domain name if they are commonly known by the Domain Name. The Respondent holds a French company registration for BILLIONAREBAY SAS, being a company name that corresponds with the Domain Name and an active and valid French trademark registration for BILLIONAREBAY, albeit for a narrower range of goods and services then the trademark was originally sought to be registered for. The Respondent also held a similar trademark registration from 2011 to 2016. In terms of Para 2.12 of WIPO Overview 3.0, Panels have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element.
However, the existence of a respondent trademark does not automatically confer rights or legitimate interests on the respondent. The Panel notes its concern with the conduct of the Respondent over the course of 14 years of ownership of the disputed Domain Name and the failure of the Respondent to participate in the proceeding. In particular, the Panel notes that the Complaint contains evidence that the Respondent (both currently and also in various past promotions) expressed an intention to operate some form of retail space from the Domain Name in competition with the Complainant (i.e. “the EBAY for the 1%”), but at no point has it actively operated such a site. Nevertheless, given the nature of the UDRP, the Panel is reluctant to “go behind” the registration of the Respondent’s trademark and question its validity especially after the decision of INPI to allow registration of the BILLIONAIREBAY trademark… as the UDRP was designed as a fast, efficient mechanism for the resolution of clear-cut cases of cybersquatting.
The Respondent has established trademark rights in France in a mark essentially identical to the Domain Name for a range of goods and services and thus has rights or legitimate interests in the Domain Name. Were the Respondent to seek to actively use the Domain Name for any purpose that amounted to an infringement of the Complainant’s rights in the EBAY Mark, the Complainant has an existing remedy in the French court. Such a court would be in a better position than this Panel to consider the nature of the Respondent’s (presently hypothetical) conduct, the extent to which such conduct breaches Complainant’s EBAY Mark, and the extent to which such conduct is legitimised by reason of the Respondent holding a registered trademark for a limited range of goods and services in France. Given the nature of Respondent’s registered company name and trademark, the Panel finds that the Complainant has failed to prove that the Respondent lacks rights or legitimate interests in the Domain Name.
Complainants’ Counsel: Amanda Marston, US
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: Sometimes the wisest Panel does nothing. This decision admirably showcases how a Panelist who obviously has the knowledge and experience to adjudge a case on its merits, nevertheless restrained himself due to the limitations and purpose of the Policy. As he states, “The complex issues raised by this case should properly be addressed by a court of competent jurisdiction”. As he also points out, “The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting” and not for “disputes involving parties that have at least a prima facie case for rights are outside the scope of the Policy”. Remember this case as one of the finest examples of a Panelist demonstrating the best appreciation for a Panel’s role and the limited jurisdiction of the UDRP.
Respondent Loves the RDNH Decision, But Publishing His Name, Not so Much
Panelists: Mr. Manuel Moreno-Torres (Presiding), Mr. Michel Vivant, and Mr. Steven M. Levy
Brief Facts: The Complainant is a French company doing business as a distributor of material for artistic purposes. It owns the European Union figurative trademark (I LOVE ART GERSTAECKER G), registered on May 31, 2012 and also owned a similar US trademark (cancelled on January 14, 2022). The Complainant argues that the disputed Domain Name lapsed due a provider change ignored by their marketing division and claims to be the legal owner of the disputed Domain Name for 19 years. The Respondent produces evidence showing that the disputed Domain Name has not been used or associated with the Complaint at the very least until 2013.
The disputed Domain Name was bought by the Respondent on January 22, 2022 via Dropcatch auction for USD $10,163. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name, as the Respondent is known for using Dropcatch .com for reselling purposes and lost several disputes in the past. The Respondent rejects the Complainant’s allegation to be known for using Dropcatch to register domains only for reselling purposes and had several lost disputes in the past. The Respondent further provides examples of the use of “I love art” as domain names and argues that he registered the disputed Domain Name to promote artists online which indeed is a legitimate purpose he had pursued before having received notice of this dispute.
Held: The file shows no indication of the Respondent targeting the Complainant’s trademark, taking unfair advantage of, or abusing the Complainant’s mark. The Complainant alleges that the Respondent is known for registering domains for reselling purposes. However, the Respondent never “offered” the domain name for sale. Neither the reselling of domain names itself is illegal except when it breaches the Policy. The Panel considers that there is no evidence to demonstrate that the Respondent should have known of the Complainant’s trademark at the time when he bought the disputed Domain Name to promote Internet artists. Indeed, there is no evidence that the similarity between the disputed Domain Name and mark was deliberate or that the Complainant or its trademark were targeted.
The Panel finds that the Respondent, legitimately, registered the disputed Domain Name based on its value as a combination of common words. Indeed, the phrase “I love art” is widely used as an Internet domain name, alone or adding a term, such as “deco”, “store”, or “studio” by artists and businesses. Only once the previous owner had let the disputed Domain Name expire and it was subsequently offered for auction, the Respondent acquired ownership.
The Complainant alleges to have been the owner of the disputed Domain Name for the last 19 years. The evidence shows that the Complainant has never been registrant of the disputed Domain Name or at the very least the beneficiary of the disputed Domain Name. The Panel notes that from 2013 the disputed Domain Name was redirected to a different domain name which apparently had some relation or at least knowledge of the Complainant.
RDNH: A finding of Reverse Domain Name Hijacking seems to this Panel to be appropriate in the circumstances. The Panel notes that the Complainant is represented by a third party who failed to provide adequate evidentiary support for its statements.
Respondent’s Representative has asked “that the Panel redact the name of the Respondent, who has done absolutely nothing to deserve to have his reputation dragged through the mud…”. The Panel finds no grounds upon which to redact the Respondent’s name and neither can it find grounds to alternatively identify Complainant’s counsel in the decision beyond the name of the law firm mentioned above.
Complainant Denied (RDNH)
Complainants’ Counsel: Gerstaecker Verlag GmbH, Germany
Respondents’ Counsel: John Berryhill, Ph.d., Esq., United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: There are a number of interesting aspects about this case that are worthy of discussion, however the one that I focus on is the Respondent’s request that the name of the Respondent be redacted. Lawyers are used to seeing their name on decisions both in court and in UDRP proceedings. When their name is attached to a winning case, it is a feather in their cap. When their name is attached to a losing case, well that is part of the profession and if there are not too many such instances, it wouldn’t generally affect their reputation. Lawyers also recognize that including the names of parties is important since it provides valuable data for subsequent cases, such as for example when identifying a pattern of behaviour based upon past conduct in a case.
Nevertheless, let’s try looking at this from a party’s perspective. Complainant’s may generally not have an issue with their name appearing in a UDRP decision since in the vast majority of cases they are corporations and not individuals who are concerned for their privacy, or at least have been wronged by someone and there is no shame in that. Respondents on the other hand in the vast majority of UDRP cases are cybersquatters, and whatever shame they bear as a result of losing a UDRP and having their name live in infamy on the Internet, is their own fault. Respondent’s who have wrongfully been accused of cybersquatting, which is akin to a claim of “fraud”, may not feel that aggrieved generally, if their name is “cleared” by a UDRP decision. On the other hand, even if they win the decision, their name is associated with cybersquatting, at least superficially until someone digs deeper and reads the case and the outcome. This can however still be a serious concern when applying for a job or affect their reputation amongst colleagues, who either do not understand the case or just take away from it that the Respondent was somehow involved in something strange but got away with it. It may however be that the public interest in publishing decisions in full, along with the names of all parties, outweighs the personal interest of a Respondent who rather not have his or her name disclosed. But on the other hand, times have changed since 1999 when the UDRP was adopted and personal privacy concerns have evolved and become stronger, particularly because we now realize that things on the Internet live forever and the Internet is commonly used to ‘look people up’. As such, it may be time to begin revisiting this issue of personal privacy for party names. One possible solution that appears to have potential in bridging the competing interests between the public and the individual’s, is to publish cases in full but not have them searchable via Google or other search engines, but to have them available in full and searchable on particular websites.
Is ‘MrStanleyWin’ Confusingly Similar to ‘Morgan Stanley’ ?
Panelist: Mr. Ho-Hyun Nahm, Esq.
Brief Facts: The Complainant provides financial, investment, and wealth management services internationally. It owns rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the USPTO (registered on August 11, 1992). The disputed Domain Name was registered on January 13, 2023. The Complainant alleges that the disputed Domain Name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark as it abbreviates “Morgan” to “MR” and adds the generic word “win” and the “.com” gTLD.
The resolving website at the Domain Name requests users’ account information uses Complainant’s historical logo and copies historical images from the Complainant. The Complainant alleges that the resolving website disrupts Complainant’s business by causing initial interest confusion to Complainant’s users and passing off as the Complainant in a phishing scheme and that the Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the disputed Domain Name. The Respondent did not submit a response in this proceeding.
Held: Abbreviating a mark and adding a generic word or descriptive term and a gTLD fails to sufficiently distinguish a disputed Domain Name from a mark under the Policy. Besides, the panels have found that the respondent’s attempts to use a disputed Domain Name to pass itself off as complainants is not a bona fide offering of goods or services or legitimate noncommercial or fair use. The Complainant provides screenshots of Respondent’s resolving website requesting users’ account information as well as using Complainant’s historical logo. The Panel, therefore, finds the Respondent fails to make a bona fide offering of goods or services or a legitimate non-commercial or fair use per Policy.
The registration and use of a domain name that fraudulently phishes for personal information and causes user confusion may be evidence of bad faith as per the Policy. The Panel recalls that the Complainant provided screenshots of Respondent’s resolving website using the Complainant’s MORGAN STANLEY mark in addition to historical logos and requesting users’ login username and password information. The Panel, therefore, finds that the Respondent passes itself off as the Complainant, and thus it registered and uses the disputed Domain Name in bad faith as per Policy. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed Domain Name that the Respondent registered the disputed Domain Name with knowledge of Complainant’s rights in its mark, which constitutes bad faith in terms of the Policy.
Complainants’ Counsel: Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
I have to say, although I am aware of how it can be appropriate to adjudge confusing similarity by reference to how a domain name is being used by a Respondent, it seems pretty weird for a Respondent to have registered a Domain Name that reads, MrStanleyWin, to take advantage of MORGAN STANLEY. From the decision it appears that the Respondent engaged in a robust fraudulent phishing scheme replete with MORGAN STANLEY logos and a login field, etc., so it is clear that he was targeting MORGAN STANLEY. Given the situation, I guess there may be a tenuous correlation between the Domain Name and MORGAN STANLEY, but we seem to be getting rather close to departing from a meaningful interpretation of “identical or confusingly similar”. In such cases, the obvious inclination is to do was much as possible under the Policy to address indefensible fraud and phishing. But the Policy is merely one mechanism for addressing it and is limited to cases involving “identical or confusingly similar” trademarks. Panels should be comfortable that if the Policy unfortunately does not provide a remedy for the situation, a Complainant is not without recourse. Often steps can be taken to disable a domain name’s DNS or webhosting services, but admittedly that is not possible in all cases and is frustrating. Here, there was at least a semblance of a basis for invoking the Policy, but this case is probably as very close as we can get to falling outside of the permitted scope.