Morgan Stanley v. 哈 哈 / 哈哈
Claim Number: FA2201001980445
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is 哈 哈 / 哈哈 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msbtc001.com>, <msbtc002.com>, <msbtc003.com>, and <msbtc004.com>, (‘the Domain Names’) registered with Name.com, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2022; the Forum received payment on January 14, 2022.
On January 17, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <msbtc001.com>, <msbtc002.com>, <msbtc003.com>, and <msbtc004.com> Domain Names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. 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 January 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2022 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@msbtc001.com, postmaster@msbtc002.com, postmaster@msbtc003.com, postmaster@msbtc004.com. Also on January 18, 2022, 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 February 9, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
A. Complainant
The Complainant’s contentions can be summarized as follows:
Complainant is the owner of the well-known mark MORGAN STANLEY with first use recorded as 1935 and registered in, inter alia, the USA for financial services. It registered morganstanley.com in 1996.
The Domain Names registered in 2021 are confusingly similar to the Complainant’s MORGAN STANLEY mark adding the abbreviation “btc” for bitcoin, generic numbers and the gTLD .com none of which distinguish the Domain Names from the Complainant’s mark. That the Domain Names abbreviate the MORGAN STANLEY Mark to “MS” does not obviate the confusing similarity.
“MS” has been for decades a common initialism of Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years. Complainant has been the owner of the domain name ms.com for over 25 years. This domain name resolves to Complainant’s primary website at www.morganstanley.com. Complainant owns numerous domain names worldwide containing or comprising ‘ms’.
The Respondent is not commonly known by the Domain Names and has not been authorized by the Complainant to use its mark. <msbtc001.com>, <msbtc002.com>, <msbtc003.com> resolved to the same site that prominently used the names and marks MS and MORGAN STANLEY and purported to offer financial-related services, namely, digital asset trading and management. The names and marks MS and/or MORGAN STANLEY were used throughout the site, including in the header and footer of the home page, and/or text on the site. Further, the “Contact us” section of the website listed a gmail address (morganstanley1588@gmail.com), which used the name and mark MORGAN STANLEY without authorization. Such fraudulent use of a domain name to impersonate and create a false connection with Complainant is not a legitimate use of the domain name or bona fide offering of goods and services. It is registration and use in bad faith diverting Internet users for commercial gain and disrupting the Complainant’s business with actual knowledge of the rights of the Complainant
<msbtc004.com> resolved to a commercial parking/hyperlink page, which itself shows that Respondent does not have legitimate or bona fide use and constitutes bad faith disrupting the Complainant’s business and diverting Internet users for commercial gain. Also, given the fraudulent use of the other three disputed domains, which are nearly identical to <msbtc004.com>, upon information and belief, Respondent has used or intends to use <msbtc004.com> as part of the same fraudulent scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the well-known mark MORGAN STANLEY with first use recorded as 1935 and registered in, inter alia, the USA for financial services. It registered morganstanley.com in 1996.
“MS” has been for decades a common initialism of Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years. Complainant has been the owner of the domain name ms.com for over 25 years. This domain name resolves to Complainant’s primary website at www.morganstanley.com. Complainant owns numerous domain names worldwide containing or comprising ‘ms’.
The Domain Names were registered in 2021. <msbtc001.com>, <msbtc002.com>, <msbtc003.com> resolved to the same site that prominently used the names and marks MS and MORGAN STANLEY and purported to offer financial-related services, namely, digital asset trading and management. The names and marks MS and/or MORGAN STANLEY were used throughout the site, including in the header and footer of the home page, and/or text on the site. Further, the “Contact us” section of the website listed a gmail address (morganstanley1588@gmail.com), which used the name and mark MORGAN STANLEY without authorization. <msbtc004.com> resolved to a commercial parking/hyperlink page.
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”).
The Domain Names consist of the mark MS in which the Complainant has owned common law rights for over 25 years, the abbreviation “btc” for bitcoin, generic numbers and the gTLD .com. MS has long been used by the Complainant and others in commerce as an abbreviation for the Complainant’s MORGAN STANLEY registered trade mark.
Registration of a domain name that contains an abbreviation of a complainant’s mark or its common law mark and adds generic terms, numbers, and a gTLD does not prevent confusing similarity between a domain name and a complainant’s mark per Policy ¶ 4(a)(i). See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (“<uniprotein.com> involving an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”), see also Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Panelist agrees that the incorporation of a well-known abbreviation of the MORGAN STANLEY mark and its common law mark MS, the generic term “btc” and numbers and the .com gTLD does not prevent confusing similarity between the Domain Names and the Complainant’s MORGAN STANLEY and MS marks per Policy ¶ 4(a)(i).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s marks.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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 use of the Domain Names is commercial and so cannot be legitimate noncommercial fair use.
The web site attached to <msbtc001.com>, <msbtc002.com>, <msbtc003.com> domain names used the Complainant's MORGAN STANLEY and MS marks in its masthead to offer financial services. As such, the web site appears official. The Panel finds this use was deceptive and confusing. As such it could not amount to the bona fide offering of goods and services. See Am. Intl Group Inc v. Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)
The Respondent has used the <msbtc004.com> domain name for links offering goods and/or services not connected with the Complainant which is not a bona fide offering of services in these circumstances. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
The Respondent has not answered this Complaint or explained why it should be allowed to use the Complainant’s distinctive trademarks in these ways.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of <msbtc001.com>, <msbtc002.com>, <msbtc003.com> domain names in relation to the Respondent’s site is deceptive and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s MORGAN STANLEY and MS marks in its masthead and throughout in relation to competing services without further explanation. The use of the Complainant’s MORGAN STANLEY mark in full in the masthead and passim on the Respondent’s site shows actual knowledge of the Complainant, its mark, rights and business.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of that web site or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to offer car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Use for pay per click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business. See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msbtc001.com>, <msbtc002.com>, <msbtc003.com>, and <msbtc004.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 16, 2022
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