Morgan Stanley v. Aimee Renae Hass / Consulting
Claim Number: FA2104001941333
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Aimee Renae Hass / Consulting (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msfunds.info>, registered with Google 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2021; the Forum received payment on April 13, 2021.
On April 13, 2021, Google LLC confirmed by e-mail to the Forum that the <msfunds.info> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 April 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2021 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@msfunds.info. Also on April 14, 2021, 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 May 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states 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. With over 1,000 offices in over 40 countries and over 55,000 employees worldwide, Complainant offers truly global access to financial markets and advice. In 2018, Complainant had net revenues of over US$ 40,000,000,000. Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years. The domain names <ms.com>, <msfunds.com>, and <msfund.com> resolve to Complainant’s main website. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark in the United States in 1992. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain name is confusingly similar to its MORGAN STANLEY mark as it abbreviates the MORGAN STANLEY mark to “MS”, a common acronym for Complainant’s mark, while adding the descriptive term “funds” and the generic top-level domain (“gTLD”) “.info”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant never authorized Respondent to use the MORGAN STANLEY mark or the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent fails to make active use of the disputed domain name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent chose to register a confusingly similar domain name to capitalize on Internet user confusion. Respondent also fails to make active use of the disputed domain name. Furthermore, Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark MORGAN STANLEY and uses it to market financial services around the world. The mark is famous. It’s abbreviation MS is widely used and known.
Complainant’s rights in its marks date back to at least 1992.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being used.
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 disputed domain name consists of a well-known abbreviation of Complainant’s mark, with the addition of the generic term “funds”. Such a domain name is confusingly similar to Complainant’s mark. The panel in Morgan Stanley v. Tommy Shelby, FA 1873937 (Forum Dec. 30, 2019) held:
The disputed domain name [msimfm.com] contains “MS”, a common acronym for Complainant’s mark, plus the letters “im” and “fm,” which are generic or descriptive acronyms for investment management and fund management (which are Complainant’s business), and the “.com” gTLD . . . . Here, Complainant argues that the term “MS” is a common acronym for the MORGAN STANLEY because: a Google search for “MORGAN STANLEY” and “MS” yields over 7 million hits, Complainant’s stock has been publicly traded on the New York Stock Exchange as “MS” for over 25 years, and Complainant is the owner of the domain name <ms.com>.
The Panel finds these arguments, which have not been rebutted by Respondent, to be persuasive . . . . For all these reasons, the Panel finds that Complainant holds rights in the acronym MS for the purposes of the Policy. Further, it is well understood that the addition of descriptive terms and a gTLD fails to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i) . . . . Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
See also Morgan Stanley v. Liam Murphy / Murphy IT Services, FA 1832448 (Forum Apr. 8, 2019); see also Morgan Stanley v. Nicenic.com,Inc., FA 1368093 (Forum Mar. 5, 2011) (finding <ms-aefund. 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). Thus the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark or any abbreviation of its mark. Respondent is not commonly known by the disputed domain name: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information for the disputed domain name lists the registrant as “Aimee Renae Hass / Consulting”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent fails to make active use of the disputed domain name. Failing to make active use of a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
The disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark and its abbreviation MS are well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint. Respondent uses a privacy service, that is, it concealed its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msfunds.info> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 7, 2021
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