Morgan Stanley v. George Washere
Claim Number: FA2005001895719
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is George Washere (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loginmorganstanleyclientserv.com>, registered with eNom, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2020; the Forum received payment on May 11, 2020.
On May 12, 2020, eNom, LLC confirmed by e-mail to the Forum that the <loginmorganstanleyclientserv.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@loginmorganstanleyclientserv.com. Also on May 13, 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 June 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Morgan Stanley, is a company that offers financial, investment, and wealth management services. Complainant asserts rights in the MORGAN STANLEY and CLIENTSERV marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered on August 11, 1992 and Reg. No. 2,322,252, registered on February 22, 2000).
2. Respondent’s <loginmorganstanleyclientserv.com>[i] domain name is confusingly similar to Complainant’s marks, as it incorporates the MORGAN STANLEY and CLIENTSERV marks in whole and merely adds the term “login” and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interest in the <loginmorganstanleyclientserv.com> domain name. Respondent is not commonly known by the domain name and is not authorized or permitted to use Complainant’s marks.
4. Additionally, Respondent fails to use the domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to create confusion in order to obtain Internet users personal information through phishing or malware.
5. Additionally, Respondent offers the domain name for sale.
6. Respondent registered and uses the <loginmorganstanleyclientserv.com> domain name in bad faith. Respondent also has a history of bad faith registration. Respondent attempts to cause confusion in order to obtain personal information through phishing or malware.
7. Additionally, Respondent uses a privacy service to mask its true identity.
8. Finally, Respondent had knowledge of Complainant’s rights in the MORGAN STANLEY and CLIENTSERV marks at the time of registration of the <loginmorganstanleyclientserv.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY and CLIENTSERV marks. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <loginmorganstanleyclientserv.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 rights in the MORGAN STANLEY and CLIENTSERV marks through registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,707,196, registered on August 11, 1992 and Reg. No. 2,322,252, registered on February 22, 2000) Therefore, Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <loginmorganstanleyclientserv.com> domain name is confusingly similar to Complainant’s marks because the domain name incorporates the MORGAN STANLEY and CLIENTSERV marks in whole and merely adds the term “login” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the <loginmorganstanleyclientserv.com> domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <loginmorganstanleyclientserv.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <loginmorganstanleyclientserv.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the MORGAN STANLEY or CLIENTSERV marks. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that 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 WHOIS information for the <loginmorganstanleyclientserv.com> domain name lists the registrant as “GEORGE WASHERE” and nothing in the record indicates that Respondent is licensed to use Complainant’s marks or is known by the domain name. Therefore, Respondent is not commonly known by the <loginmorganstanleyclientserv.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims Respondent fails to use the <loginmorganstanleyclientserv.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to confuse Internet users in connection with a fraudulent scheme. Use of a domain name in furtherance of a fraudulent phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Additionally, use of a domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant has provided evidence that Respondent registered the <loginmorganstanleyclientserv.com> domain name to cause confusion with Internet users familiar with Complainant in order to obtain their personal information either through email phishing or malware. Complainant provides screenshots of Respondent’s website which appears to ask for Internet users’ personal information. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the <loginmorganstanleyclientserv.com> domain name to cause confusion in furtherance of a fraudulent scheme for financial gain. An attempt to disrupt a complainant’s business for commercial benefit shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (“Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant has shown to the satisfaction of the Panel that Respondent registered the <loginmorganstanleyclientserv.com> domain name to cause confusion with Internet users familiar with Complainant, to obtain their personal information either through email phishing or malware. Complainant provides screenshots of Respondent’s website which appears to ask for Internet users personal information. This is evidence of bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Finally, Complainant contends that Respondent registered the <loginmorganstanleyclientserv.com> domain name with knowledge of Complainant’s rights in the MORGAN STANLEY and CLIENTSERV marks. The Panel agrees with Complainant that due to the well-known nature of the marks and Respondent’s use of the marks to capitalize on confusion, Respondent had actual knowledge of Complainant's rights in the MORGAN STANLEY and CLIENTSERV marks prior to registering the <loginmorganstanleyclientserv.com> domain name; actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loginmorganstanleyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 13, 2020
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