Morgan Stanley v. Gary Fox
Claim Number: FA2011001921833
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Gary Fox (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mstanley-international.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2020; the Forum received payment on November 24, 2020.
On November 25, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <mstanley-international.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2020 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@mstanley-international.com. Also on November 25, 2020, 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 December 17, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the MORGAN STANLEY mark acquired through its ownership of the service mark registration described below and in extensive use of the mark in the provision of financial, investment, and wealth management services with over 1,000 offices in over 40 countries. In 2018 Complainant had net revenues of over USD$ 40,000,000,000 and over 55,000 employees worldwide. Complainant submits that as a result of extensive use, promotion, and advertisement, the MORGAN STANLEY marks are well-known to consumers and famous and is ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for at least the past two years, and was ranked numbers 26 and 33, respectively, in Brand Finances 2016 and 2017 Banking 500 global brands as evidenced by reports which have been adduced in evidence in an annex to the Complaint.
Complainant alleges that the disputed domain name, which incorporates Complainant’s MORGAN STANLEY mark in whole, must be deemed virtually identical or confusingly similar to Complainant’s registered marks. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
Complainant submits that the disputed domain name abbreviates the element “Morgan” in Complainant’s mark to the initial letter “m”, which Complainant argues does not obviate the confusing similarity with Complainant’s MORGAN STANLEY mark. See, e.g., Morgan Stanley v. Zhao Yun, FA 1877638 (Forum Feb. 12, 2020) (MSTANLEYGLOBAL.COM confusingly similar to MORGAN STANLEY mark).
Complainant further submits that the addition of the descriptive phrase “international” does not obviate the confusing similarity. See Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC, FA 1246046 (Forum Mar. 24, 2009) (addition of generic words “bank” and “online” in domain MORGANSTANLEYBANKONLINE to complainant’s MORGAN STANLEY mark did not obviate confusion).
Complainant adds that addition of the gTLD ".com." Addition of a hyphen and elimination of spaces also fail to obviate the confusing similarity. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name).
Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name. (UDRP Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii)), arguing that upon information and belief, neither MORGAN STANLEY, MSTANLEY, MSTANLEY-INTERNATIONAL nor the disputed domain name is part of Respondent’s name.
Additionally, Complainant submits that upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY mark, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Respondent was not commonly known by those names. See Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name).
Complainant asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY mark, the marks or name MSTANLEY or MSTANLEY-INTERNATIONAL or the disputed domain name. Complainant adds that Respondent has no relationship whatsoever with Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Complainant alleges that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use and refers to a screenshot which illustrates that the disputed domain name does not resolve to an active website. Complainant argues that this amounts to passive holding of the disputed domain name which is not a legitimate use or bona fide offering of goods or services for the purposes of the Policy. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006) (“passive holding of a domain name does not constitute ‘legitimate non-commercial or fair use’”).
Complainant further alleges that it has received notice from a third-party investor that Respondent is using the disputed domain name to impersonate Complainant, to phish for personal information and defraud consumers. The information is specifically that Respondent has promoted purported financial services under the MORGAN STANLEY name and mark and used the email address admin@mstanely-international.com to communicate with potential victims of investment fraud.
Complainant alleges that one such consumer actually has been defrauded out of forty thousand GBP. Such fraudulent use of a domain name to impersonate and create a false connection with Complainant, defraud consumers and phish for personal information is not a legitimate use of the domain name or bona fide offering of goods and services. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”)
Complainant submits that the disputed domain name was registered and is being used in bad faith alleging that it is clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant has a long and well-established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world.
Complainant submits that there can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he or she chose and registered the disputed domain name, and in fact chose the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. See Drexel University v. David Brouda, D2001-0067 (WIPO Mar. 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”).
Complainant argues that Respondent’s failure to make active use of the disputed domain name via a website is evidence of bad faith use and registration. See Kohl's Illinois, Inc. v. c/o kphls.com; c/o kohals.com; c/o kohlsdepartmentstore.com; c/o khols.com, FA 1442950 (Forum June 7, 2012) (“Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under Policy ¶ 4(a)(iii)”).
Complainant adds that by causing initial interest confusion, 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. See Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion).
In addition, Complainant submits that the use of the disputed domain name for the purposes of phishing amounts to bad faith use of the disputed domain name.
Complainant adds that this is the second UDRP complaint Complainant has filed against Respondent based on the use of a domain name confusingly similar to the MORGAN STANLEY mark. In Morgan Stanley v. Gary Fox / Wet Pixels, FA 1913462, Respondent, using the same name Gary Fox and same email address garthman66@hotmail.com, registered the domain name <morganstanleyplc.com>. Respondent did not file a formal response to the complaint but instead emailed the Forum admitting that “I am not disputing this claim.” In light of this representation, the Panel transferred the domain name <morganstanleyplc.com> to Complainant without making any specific findings. Such a pattern of targeting Complainant’s marks also shows bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services in over 40 countries across the world using the MORGAN STANLEY name and mark, for which it owns United States registered service mark MORGAN STANELY, registration number 1,707,196, registered on the Principal Register on August 11, 1992 for services in international class 36.
Complainant has established Internet presence and maintains its principal website at <www.morganstanley.com>
The disputed domain name was registered on November 18, 2020 and does not resolve to any active website or location.
in the absence of any Response, there is no information available about Respondent except that which is found in the Complaint, the Registrars WhoIs, and the information provided by the Registrar in response to the request from the Forum for verification of the registration details of the disputed domain name.
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”).
Complainant has provided clear, convincing, and uncontested evidence of its ownership of rights in the MORGAN STANLEY mark acquired through its ownership of the registration described above and the extensive goodwill that it is established in the mark to extensive use in this financial services business with over 1,000 offices, in over 40 countries, with net revenues in excess of USD$ 40,000,000,000 in 2018 and with over 55,000 employees worldwide.
The disputed domain name consists of the element “mstanley”, a hyphen, the element “international” and the generic Top-Level Domain (“gTLD”) extension <.com>.
In context, on the balance of probabilities the element “mstanley”, would be perceived by Internet users as an abbreviation of complainant’s MORGAN STANLEY name and mark. This combination of letters has no other obvious meaning or significance. Complainant’s mark in an abbreviated form is therefore the initial, dominant and only distinctive element in the disputed domain name.
The other elements viz. the hyphen, the descriptive, generic term “international” and the gTLD <.com> extension provide no distinguishing characteristic whatsoever.
This Panel finds therefore that on the balance of probabilities, the disputed domain name is confusingly similar to the MORGAN STANLEY mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name, submitting:
· that upon information and belief, neither MORGAN STANLEY, MSTANLEY, MSTANLEY-INTERNATIONAL nor the disputed domain name is part of Respondent’s name;
· that upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY mark, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name;
· that Respondent was not commonly known by those names;
· that Respondent is not a licensee of Complainant;
· that Respondent has never been authorized by Complainant to register or use the MORGAN STANLEY mark, the marks or name MSTANLEY or MSTANLEY-INTERNATIONAL or the disputed domain name;
· that Respondent has no relationship whatsoever with Complainant;
· that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use;
· that the screenshot adduced in evidence illustrates that the disputed domain name does not resolve to an active website, and when entered into a browser search generates a message to the effect that the site cannot be reached;
· that Respondent’s failure to use the disputed domain name is address of an active website amounts to passive holding of the disputed domain name which is not a legitimate use or bona fide offering of goods or services for the purposes of the Policy.
Complainant has also alleged that it has received notice from third-party investor that the disputed domain name is being used for the purposes of phishing. This allegation has not been supported by any evidence and so has not been taken into account by the Panel as it is a mere assertion.
It is well established that where a Complainant makes out a prima facie case that respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to establish the rights or interests. Respondent has failed to discharge the burden of production and in the circumstances this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has an extensive worldwide reputation and goodwill in the MORGAN STANLEY mark. The disputed domain name is confusingly similar to Complainant’s mark, there is no explanation as to why the disputed domain name was chosen and registered and goodwill in the mark. It is most improbable that the choice and registration of the disputed domain name was a mere coincidence and it must be inferred in the circumstances that the registration was intended to target Complainant’s reputation.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith and ordered take predatory advantage of Complainant’s goodwill in the MORGAN STANLEY mark.
The evidence adduced in the Complaint shows that the disputed domain name does not resolve to any active website or location.
Having considered the degree of distinctiveness of Complainant’s mark, the strength of Complainant’s reputation in international financial services, the failure of Respondent to submit any Response or to provide any evidence of actual or contemplated good-faith use, and Respondent’s use of privacy service to conceal his identity on the published WhoIs, as well as the implausibility of any good faith use to which the domain name may be put, this Panel finds that on the balance of probabilities the passive holding of the disputed domain name by Respondent amounts to use in bad faith for the purposes of Policy ¶ 4(a)(iii).
In reaching this decision this Panel is further convinced by the fact that this is the second time that Complainant has brought a complaint against Respondent.
Having found that the disputed domain name was registered and is being used in bad faith, this Panel finds that Complainant has established the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to remedy sought in the Complaint.
Complainant having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mstanley-international.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: December 31, 2020
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