Morgan Stanley v. Kian D Read / Anonymize, Inc.
Claim Number: FA2106001953491
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Kian D Read / Anonymize, Inc. (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ms-privateservice.com> and <msamlservices.com> (“Domain Names”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Epik Inc.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2021; the Forum received payment on June 30, 2021.
On June 30, 2021 and July 1, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com and Epik Inc. confirmed by e-mail to the Forum that the <ms-privateservice.com> and <msamlservices.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Epik Inc. and that Respondent Kian D Read is the current registrant of <ms-privateservice.com> and Respondent Anonymize, Inc. is the current registrant of <msamlservices.com>. PDR Ltd. d/b/a PublicDomainRegistry.com and Epik Inc. has verified that Respondent is bound by their respective registration agreements 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 July 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@ms-privateservice.com, postmaster@msamlservices.com. Also on July 1, 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 July 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The data provided by Registrars PDR Ltd. d/b/a PublicDomainRegistry.com and Epik Inc. indicates that the Domain Names are registered to different entities (<ms-privateservice.com> to Kian D Read and <msamlservices.com> to Anonymize, Inc.) with different registrars and were registered several weeks apart. Paragraph 3(c) can be satisfied if there is evidence demonstrating that in all likelihood the domain names are in effect controlled by a single person or entity.
Complainant contends that the identified registrants for the Domain Names are under common control because:
1) the Domain Names use the same ISP in Ukraine. The Panel notes that there is no evidence of this in the Complaint and indeed the Domain Names are registered with different Registrars;
2) the Domain Names were registered within a short time frame of each other (in this case approximately 6 weeks); and
3) The Domain Names are two of a number of ms-formative domain names registered by Respondent in connection with a common scam. Many of these domains also used the same registrars as used here, PDR and Epik, as well as the same Epik privacy service, the same Ukraine ISP and similar likely fake addresses in the UK.
The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the domain names <ms-privateservice.com> and <msamlservices.com> are jointly controlled by the same holder. The Panel notes that the websites to which the Domain Names presently resolve to are different, that only <ms-privateservice.com> has been used in connection with a scam e-mail (discussed further below) and that there is no evidence of usage of an Ukraine ISP. While <msamlservices.com> is connected to a privacy service and the address of the registrant for <ms-privateservice.com> is in the United Kingdom the allegations of shared illegality are unsupported in the case of <msamlservices.com> and as such are insufficient to find that both Domain Names are jointly controlled by the same holder.
The Complaint as it stands is in breach of Paragraph 3(c) of the Rules in that it is in respect of multiple domain names registered by different holders. Forum Supplemental Rule 4(c), provides that if the Panel determines that insufficient evidence is presented to link the respective domain names, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel. The Panel, without prejudice to any future proceedings under the Policy, dismisses the Complaint as against the domain names <msamlservices.com>.
For the purposes of the remainder of the decision any reference to Respondent should be read as a reference to Kian D Read and any reference to the Domain Name should be read as a reference to <ms-privateservice.com>.
A. Complainant
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services to a broad spectrum of clients in over 40 countries. Complainant maintains registrations of its MORGAN STANLEY mark with authorities worldwide, including with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,707,196, registered August 11, 1992). The Domain Name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark because it abbreviates the MORGAN STANLEY mark while adding in the terms “service” and “private” along with the “.com” generic top-level domain (“gTLD”) to form the domain names.
Respondent does not have any rights or legitimate interests in the <ms-privateservice.com> domain name because Respondent is not commonly known by the Domain Name nor is Respondent authorized to use Complainant’s MORGAN STANLEY mark. Respondent is not using the Domain Name in connection with a bona fide offer of goods or services nor for a legitimate noncommercial or fair use because Respondent passively holds the Domain Name and uses it to impersonate Complainant and engage in email phishing.
Respondent registered and uses the <ms-privateservice.com> domain name in bad faith because Respondent has a history of bad faith registration and use. Respondent further registered and uses the Domain Name in bad faith because Respondent uses the Domain Name to take advantage of the goodwill and brand recognition associated with Complainant, including impersonating Complainant in communications with Complainant’s clients. Finally, Respondent acted with constructive and actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. The Domain Name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used 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 mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,707,196, registered August 11, 1992). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
The Panel finds that the Domain Name is confusingly similar to the MORGAN STANLEY mark since it incorporates an abbreviation “ms-” of the MORGAN STANLEY mark and adds the terms “private service” and the “.com” gTLD. Addition of generic or descriptive terms and a gTLD to an abbreviation of a trade mark is generally insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta).
In support of the above conclusion the Panel notes that section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that “In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the MORGAN STANLEY mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Kian D Read” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive which by itself does not show a bona fide offering of goods and services. Complainant alleges, and provides evidence supporting its allegations, that Respondent uses an email address associated with the Domain Name to pass itself off as Complainant in furtherance of a scam where recipients of the e-mail are encouraged to provide their funds to the Respondent under the misapprehension that they are investing their funds with Complainant. Use of a disputed domain name to pass off as a complainant through emails is 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 Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018) (“Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, April 25, 2021, Respondent had actual knowledge of Complainant’s MORGAN STANLEY mark. The Respondent uses the Domain Name to pass itself off as Complainant for financial gain. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses an email address associated with the Domain Name to pass itself off as the Complainant to disrupt the Complainant’s business or for financial gain. Using a disputed domain name to pass off as a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b) (iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also 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). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy with respect to the <ms-privateservice.com> domain name the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ms-privateservice.com> domain name be TRANSFERRED from Respondent to Complainant and the <msamlservices.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: July 28, 2021
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