Morgan Stanley v. LG Ltd / Laptop Guard
Claim Number: FA2009001913016
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is LG Ltd / Laptop Guard (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgans-im.com> (‘the Domain Name’), registered with Hosting Concepts B.V. d/b/a Openprovider.
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 September 19, 2020; the Forum received payment on September 19, 2020.
On September 22, 2020, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <morgans-im.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 September 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@morgans-im.com. Also on September 23, 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 October 16, 2020 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 Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of the MORGAN STANLEY mark, registered, inter alia, in the United States for financial services with first use recorded as 1935. It is well known.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s trade mark abbreviating STANLEY to S, but with the Complainant’s mark still recognizable in the Domain Name and the addition of the generic term ‘im’ short for investment management, a hyphen and the gTLD “.com” which do not prevent the said confusing similarity.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name pointed to the Complainant’s official site before it was taken down to actively create a false association with the Complainant, cause confusion and trade on its goodwill which is not a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent has sent emails to potential investors using the MORGAN STANLEY name and mark, official website and address, including on purported offers for securities and in emails asking investors to sign documents providing confidential information. 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.
The Respondent’s use of the Domain Name shows actual knowledge of the well-known Complainant, its rights and business, and is registration and use in bad faith for fraudulent purposes disrupting the Complainant’s business and confusing Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the MORGAN STANLEY mark, registered, inter alia, in the United States for financial services with first use recorded as 1935. It is well known.
The Domain Name registered in 2020 has been used in a fraudulent e mail phishing scam.
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 Name consists of a shortened version of the Complainant's MORGAN STANLEY mark (which is registered, inter alia in USA for financial services with first use recorded as 1935) namely MORGAN S, a hyphen, an acronym for investment management ‘im’ and the gTLD “.com.”
It has been consistently held by Panels that there is confusing similarity where a complainant’s trade mark is abbreviated in a domain name, but is still recognizable within that domain name. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). The Panel holds that ‘Morgan S’ is confusingly similar to the Complainant’s trade mark and was clearly used by the Respondent as a domain name, precisely because it is confusingly similar to the Complainant’s mark.
The addition of a hyphen does not prevent confusing similarity between the Complainant’s mark and the Domain Name. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)
The addition of the generic term ‘im’ meant to indicate investment management in the Domain Name does not serve to distinguish the Domain Name from the Complainant’s MORGAN STANLEY mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms does not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant has not authorized the use of a confusingly similar version of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, 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 Panel notes the alleged pointing of the Domain Name to the Complainant’s official web site although could not see evidence of this in the papers with this Complaint.
The Domain Name has been used in a fraudulent e mail scheme. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services or a noncommercial legitimate or fair use. 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)).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
In the opinion of the Panel the use made of the Domain Name in relation to a fraudulent e mail scam is confusing and deceptive in that recipients of the e mails will reasonably believe those e mails are connected to or approved by the Complainant as communications sent by these e mails used the Complainant’s full MORGAN STANLEY mark and official web site and address details. This mimicking by the Respondent of the Complainant shows that the Respondent was aware of the Complainant and its business and rights and constitutes passing off. Impersonating a complainant by use of a complainant’s mark in a fraudulent e mail scam is disruptive and evinces bad faith registration and use. See Microsoft Corporation v. Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4(b)(iii).).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶ 4(b)(iii). There is no need to consider any additional grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morgans-im.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 17, 2020
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