Morgan Stanley v. Anonymize, Inc. / jenny Stripe / Gerry Philips
Claim Number: FA2107001955704
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondents are Anonymize, Inc. / jenny Stripe / Gerry Philips (“Respondents”), United States and United Kingdom.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <msclientservice-au.com>, <clientservice-msau.com> and <clientservices-msuk.com>, registered respectively with Epik Inc., Pdr Ltd. D/B/A Publicdomainregistry.Com and URL Solutions, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2021; the Forum received payment on July 19, 2021.
On July 20 and 22, 2021, Epik Inc., Pdr Ltd. D/B/A Publicdomainregistry.Com and URL Solutions, Inc. confirmed by e-mail to the Forum that the <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names are registered with Epik Inc., Pdr Ltd. D/B/A Publicdomainregistry.Com and URL Solutions, Inc. and that Respondents are the current registrants of the names. Epik Inc., Pdr Ltd. D/B/A Publicdomainregistry.Com and URL Solutions, Inc. have verified that Respondents are bound by the Epik Inc., Pdr Ltd. D/B/A Publicdomainregistry.Com and URL Solutions, Inc. registration agreements and have 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2021 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@msclientservice-au.com, postmaster@clientservice-msau.com and postmaster@clientservices-msuk.com. Also on July 22, 2021, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
On August 2, 2021, Complainant filed an Additional Submission, without proof that it had been sent to any of Respondents as required by the Forum's Supplemental Rule 7. On August 3, 2021, the Forum sent a courtesy copy by email to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Paragraph 3(c) of 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”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. The <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names were registered within 8 days of each other, each using the same hosting ISP in Ukraine and each containing the same terms “ms,” “clientservice” and either “uk” or “au” –in different orders.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Anonymize, Inc. / jenny Stripe / Gerry Philips as “Respondent”.
A. Complainant
Complainant provides financial, investment, and wealth management services. It has rights in the MORGAN STANLEY and CLIENTSERV marks through their registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names are confusingly similar to Complainant’s marks. “MS” is a well-known acronym for MORGAN STANLEY.
Respondent lacks rights or legitimate interests in the <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names. Respondent is not commonly known by the names MORGAN STANLEY, MS or CLIENTSERV nor any of the domain names and does not engage in any business or commerce under any of those names. Complainant has never authorized Respondent to use the marks or domain names. Respondent has not used the domain names in connection with a bona fide offering of goods or services as Respondent is passively holding the domain names and it is likely Respondent has used or will use them in connection with an attempt to impersonate Complainant and to scam consumers, since Respondent has used similar domain names to contact potential investors claiming Respondent is affiliated with Complainant and offering fake investment opportunities. See Morgan Stanley v. Henry Freeman / Anonymize, Inc. / Ellis E Warner, FA 1943140 (Forum June 1, 2021) (<ms-clientservices.com> <ms-aml.com> <ms-private.com> <ms-clientservice.com>); Morgan Stanley v. Lucy Wilston, FA 1950358 (Forum June 9, 2021) (ms-clientserviceau.com); Morgan Stanley v. David King, FA 1950869 (Forum July 8, 2021) (<ms-clientservicesie.com>). It is almost certain that Respondent in the prior proceedings is the same as Respondent in the instant proceedings.
Respondent registered the <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names in bad faith with actual knowledge of Complainant’s rights in the MORGAN STANLEY and CLIENTSERV marks. Respondent has an established pattern of bad faith due to Respondent’s past conduct and UDRP history. Respondent is attempting to disrupt Complainant’s business and is passively holding the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant’s Additional Submission provided evidence that came into existence after the filing of the Complaint and hence could not have been addressed at that time. Although Complainant did not provide proof that it had sent a copy to Respondent as required by the Forum's Supplemental Rule 7, the Forum forwarded a courtesy copy of it to Respondent. The Panel is satisfied, pursuant to paragraph 10(b) of the Rules, that Respondent had a fair opportunity to present its case in response to Complainant’s Additional Submission within the remaining time allocated for a response. Under these circumstances the Panel considers it appropriate to have regard to that evidence.
Complainant’s Additional Submission exhibited an email dated July 28, 2021, sent from “client@clientservices-msuk.com” and expressed to be from the Compliance Department of Complainant. It displayed Complainant’s London office address and Complainant’s website address “www.morganstanley.com”. The email sought payment from the two addressees “to fund your account”. Complainant submitted that this constituted additional evidence recently obtained showing fraudulent use of the domain name <clientservices-msuk.com>.
Complainant has established all the elements entitling it to relief.
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 shown that, through registration with the USPTO, it has rights in the marks MORGAN STANLEY, e.g. Reg. No. 1,707,196, registered Aug. 11, 1992 and CLIENTSERV, e.g. Reg. No. 2,322,252, registered Feb. 22, 2000. The Panel finds Respondent’s <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names to be confusingly similar to Complainant’s marks as each domain name merely incorporates “MS”, a commonly known acronym for Complainant’s MORGAN STANLEY mark; the entirety of Complainant’s CLIENTSERV mark; a hyphen and the geographic term “au” or “uk”, none of which sufficiently distinguish the domain names from Complainant’s marks; and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names were registered on July 11, 2021, July 17, 2021, and July 19, 2021 respectively, long after Complainant has shown that its MORGAN STANLEY mark had become famous and its “MS” acronym very well known. The domain names do not resolve to active websites. As shown in Complainant’s Additional Submission, the domain name <clientservices-msuk.com> has recently been used by Respondent to pass itself off as Complainant in seeking fraudulently to obtain payment.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
The circumstances set out in relation to the second element satisfy the Panel that Respondent registered the domain names in bad faith while fully aware of Complainant’s famous MORGAN STANLEY mark, its MS abbreviation and its CLIENTSERV mark.
Respondent is using the <clientservices-msuk.com> domain name in bad faith to impersonate Complainant in a fraudulent attempt to scam consumers.
Although the <msclientservice-au.com> and <clientservice-msau.com> domain names do not resolve to an active website, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and as this Panel found in Morgan Stanley v. Henry Freeman / Anonymize, Inc. / Ellis E Warner, FA1943140 (Forum June 1, 2021), there is no conceivable active use that could be made of those domain names that would not amount to an infringement of Complainant’s rights. Accordingly, the Panel finds that Respondent’s passive use of those domain names constitutes use in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msclientservice-au.com>, <clientservice-msau.com>, and <clientservices-msuk.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 19, 2021
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