Morgan Stanley v. Liam Murphy / Murphy IT Services
Claim Number: FA1903001832448
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Liam Murphy / Murphy IT Services (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msinvestmentbanking.com>, registered with NameCheap, Inc.
James Bridgeman SC, Scott R. Austin and Hon Charles K. McCotter, Jr., (Ret.) as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 4, 2019; the Forum received payment on March 4, 2019.
On March 5, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <msinvestmentbanking.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 March 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2019 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@msinvestmentbanking.com. Also on March 6, 2019, 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 April 1, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed James Bridgeman SC, Scott R. Austin and Hon. Charles K. McCotter, Jr., (Ret.) as Panelists.
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 submits that it offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities, and claims rights in the MORGAN STANLEY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) set out below and extensive use of the mark in trade in the United States and other jurisdictions throughout the world.
Complainant alleges that the disputed domain name <msinvestmentbanking.com> is confusingly similar to Complainant’s MORGAN STANLEY mark as it incorporates a common acronym of the mark (“MS”), the generic/descriptive term “investment banking,” and a “.com” generic top-level domain.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name asserting that Respondent is not licensed or authorized to use Complainant’s MORGAN STANLEY mark and is not commonly known by the disputed domain name. Additionally, Complainant alleges that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant through an email phishing scheme.
Complainant submits that Respondent registered and is using the <msinvestmentbanking.com> domain name in bad faith. Complainant submits that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark when the disputed domain name was registered and is attempting to commercially benefit by using an email address associated with the disputed domain name in bad faith to pass himself off as Complainant and phish for users’ information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the MORGAN STANLEY mark in association with its financial, investment, and wealth management services in the United States and other jurisdictions and is the owner of the following registered trademarks:
· US registered Service Mark MORGAN STANLEY registration number 1,707,196, registered on the Principal Register on August 11, 1992 for financial, investment, and wealth management services in International Class 36;
· US registered Trademark MORGAN STANLEY, registration number 4,470,389 registered on the Principal Register on January 21, 2014 for goods in International Classes 9 and 16
In the absence of a Response, the only information available relating to the disputed domain name alleged by Complainant for the Panel to consider is that submitted in the Complaint and on the Registrar’s WhoIs.
Respondent is the registered owner of the disputed domain name <msinvestmentbanking.com> which was registered on October 23, 2018.
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 decides 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 draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
This 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.”).
This Panel holds that Complainant’s registrations of the MORGAN STANLEY mark with the USPTO are sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark) and furthermore that it has acquired rights in the mark by extensive use in business within the United States and other jurisdictions.
This Panel accepts Complainant’s submission that the disputed domain name is confusingly similar to the MORGAN STANLEY mark, as the name incorporates a common abbreviation, [or initialism], using the initials of each term comprising Complainant’s mark (“ms”) in combination with the generic/descriptive terms “investment banking,” and the gTLD “.com” extension.
In making this determination this Panel is conscious that MS is a two-letter abbreviation, which some panels have found insufficient to serve as a basis to establish trademark rights where an abbreviation may not be taken by the public to refer to a complainant. See, e.g., National Automotive Experts, L.L.C. v. Domain Administrator / Vertical Axis Inc., FA 1603505 (Forum Mar. 17, 2015) (“NAE is the combination of three letters in the English language, which can be an acronym for more than one entity. While the Panel acknowledges that Complainant and others may refer to Complainant as NAE, it notes that the USPTO has not yet declared that Complainant has the right to monopolize the three letters NAE. Thus, the Panel declines to find that Complainant has trademark rights in the acronym NAE.”); but see Amazon Technologies, Inc. v. Kurc Oksana, FA 1780758 (Forum May 9, 2018) (“merely abbreviating AMAZON to AMZ does not avoid confusing similarity under the Policy”); Capital One Financial Corp. v. YongHoon Lee / SoftTech, FA 1555170 (Forum May 20, 2014) (“abbreviating a complainant’s mark in a disputed domain name does not sufficiently distinguish the disputed domain name from the trademark”). In addition, more specifically, panels in prior cases involving Complainant and a disputed domain name using the MS abbreviation have found confusing similarity with Complainant’s MORGAN STANLEY mark. See Morgan Stanley v. Nicenic.com,Inc., FA 1368093 (Forum Mar. 5, 2011) (finding <ms-ae-fund.com> confusingly similar to Complainant’s MORGAN STANLEY mark; “Previous panels have concluded that where a disputed domain name contains a common abbreviation of a mark, confusing similarity exists”). See also Morgan Stanley Smith Barney Holdings LLC v. ms-sb ms, FA 1299536 (Forum Feb. 16, 2010) (concluding that <ms-sb.com> was confusingly similar to Complainant’s MORGAN STANLEY mark)
However, considering all the circumstances of the present case,
· where the abbreviation (“ms”) comprising Complainant’s ticker symbol on the New York Stock Exchange by which investors have known it for at least the past 25 years, is incorporated into the disputed domain name as the first, dominant and only distinctive element;
· where that dominant element of the domain name is immediately followed by terms that describe Complainant’s well-known business activities of “investment banking”;
· where Complainant has produced evidence in the form of WhoIs data, that confirms Complainant is the owner of the domain <ms.com> that resolves to the Morgan Stanley primary investment banking website and that it uses the abbreviation “ms” in its business in addition to that abbreviation being the symbol by which shares in its business are publicly traded and known to investors; and
· where there is evidence that Respondent has chosen to use the disputed domain name incorporating Complainant’s abbreviation and stock ticker symbol to engage in a phishing scheme to intentionally confuse Internet users,
this Panel finds that on the balance of probabilities the disputed domain name is confusingly similar to Complainant’s mark.
In reaching this decision, this Panel finds that the descriptive element “investment banking” does not distinguish the disputed domain name from Complainant’s mark and in fact exacerbates the creation of the confusing similarity with Complainant’s MORGAN STANLEY mark. Furthermore, in the circumstances of this case the gTLD “.com” extension may be ignored for the purposes of comparison.
This Panel determines therefore that the disputed domain name <msinvestmentbanking.com> is confusingly similar to the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).
Complainant has therefore succeeded in meeting the required showing under Policy ¶ 4(a)(i).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
It is well established under the Policy, that once a complainant makes out a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden of production shifts to the respondent to establish such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant submits that Respondent has no rights or legitimate interests in the <msinvestmentbanking.com> domain name, arguing that Respondent is not commonly known by the disputed domain name. The WHOIS information of record identifies the registrant of the at-issue domain name as “Liam Murphy / Murphy IT Services,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark.
Furthermore, Complainant asserts that it has not authorized Respondent to use the MORGAN STANLEY mark in any way.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <msinvestmentbanking.com> domain name is demonstrated by its use of the disputed domain name to generate an email address used to pass itself off as Complainant and thereby establish an elaborate scheme to phish for users’ personal information, takeover accounts, and/or send fake money. Use of an email address to pass off in furtherance of a phishing scheme could never amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). In support of this submission, Complainant has provided copies of emails sent from an email address associated with the disputed domain name appearing to pass off as one of Complainant’s executives.
This Panel accepts that Respondent has not been authorized to use Complainant’s mark in any way. This Panel also accepts that on the evidence adduced Respondent is not commonly known by the disputed domain name. In the absence of a Response, this Panel notes the WHOIS information to support this finding that Respondent is not commonly known by the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Furthermore, Complainant has provided prima facie evidence that Respondent is using the disputed domain name for the purposes of phishing.
In these circumstances, this Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and the burden of production has shifted to Respondent to prove that he has such rights or interests.
As Respondent has failed to deliver a Response or explanation and has therefore failed to discharge its burden of production, Complainant, therefore, is entitled to succeed in the second element of the test under Policy ¶ 4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Having reviewed the evidence, this Panel finds on the balance of probabilities that the registrant of the disputed domain name was aware of Complainant’s name, mark and reputation when the disputed domain name was chosen and registered and that the disputed domain name was chosen and registered to reference Complainant, its reputation and its goodwill.
Complainant has provided prima facie evidence, which has not been refuted by Respondent, that Respondent has purported to impersonate an executive of Complainant in emails designed to fraudulently solicit deposits and obtain personal information from third parties. This phishing activity evinces Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). The Panel has reviewed and considered in its finding competent evidence submitted by Complainant of a phishing scheme based on the emails sent from an email address hosted at the <msinvestmentbanking.com> domain name.
This Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msinvestmentbanking.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panel Chair
For and on behalf of the Panel
Scott R. Austin Hon Charles K. McCotter, Jr., (Ret.)
Panelist Panelist
Dated: April 8, 2019
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