Morgan Stanley v. Anonymize, Inc.
Claim Number: FA2107001956457
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Anonymize, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mssecureplatform.com>, registered with 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2021; the Forum received payment on July 23, 2021.
On July 28, 2021, Epik Inc. confirmed by e-mail to the Forum that the <mssecureplatform.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik Inc. 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 July 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@mssecureplatform.com. Also on July 30, 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 August 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant 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. Complainant has rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). “MS” has been for decades a common initialism for Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field. The disputed domain name is confusingly similar to Complainant’s marks.
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by either the MORGAN STANLEY, MS nor the disputed domain name and Complainant never authorized Respondent to use the MORGAN STANLEY mark, MS, or the disputed domain name. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it to pass off as Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as with Complainant. Respondent chose to register a confusingly similar domain name to capitalize on Internet user confusion. Respondent had constructive and actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the disputed domain name, evidenced by Complainant’s trademark registrations and the famous nature of Complainant’s mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 11, 2021.
2. Complainant has established rights in the mark MORGAN STANLEY through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992).
3. Complainant is often referred to by its acronym MS. “MS” has been for decades a common initialism for Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field.
4. The disputed domain name resolves to a website purporting to be a login portal for Complainant.
5. Respondent has sent emails to potential “investors” purporting to be from Complainant and using the MORGAN STANLEY mark, directing the investors to log into this site.
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 asserts rights in the MORGAN STANLEY mark through Complainant’s 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 is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Complainant also argues that the term “MS” is a common acronym for the MORGAN STANLEY because: i) a Google search for webpages that contain both the terms “Morgan Stanley” and “MS” yielded over 5 million results; ii) Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years; iii) Complainant has been the owner of the domain name ms.com for over 25 years which resolves to Complainant’s primary website at www.morganstanley.com; iv) Complainant owns numerous domain names worldwide containing or comprising “MSFUND” or “MSFUNDS,” including msfund.cn,msfund.com, msfund.com.cn, msfunds.cn, msfunds.com, and msfunds.com. all of which were registered before Complainant registered the disputed domain name; and v) Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field.
For the reasons above, the Panel finds that Complainant has established rights in the acronym MS as well as MORGAN STANLEY for the purposes of the Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <mssecureplatform.com> is confusingly similar to Complainant’s MORGAN STANLEY mark as it contains “MS”, a common acronym for Complainant’s mark, plus the generic terms “secure platform” and the gTLD “.com.” The Panel observes that when a domain name incorporates an acronym of a complainant’s mark, past panels have been reluctant to hold that the domain name is identical or confusingly similar without establishing rights in the acronym. See Soc’y of St. Vincent de Paul v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). As discussed above, the Panel finds that Complainant has established rights in the acronym MS. Adding generic terms and a gTLD to an abbreviation of a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); see also 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).”). Respondent adds the generic terms “secure platform” and the gTLD “.com” to Complainant’s MS mark. Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s MS mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by either the MORGAN STANLEY, MS nor the disputed domain name and Complainant never authorized Respondent to use the MORGAN STANLEY mark, MS, or 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 Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as “Anonymize, Inc.” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the MORGAN STANLEY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to pass off as Complainant. Using a confusingly similar domain name to pass off as a complainant 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 iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Complainant provides a screenshot showing the disputed domain name resolves to a website that uses the MORGAN STANLEY name and mark in the tab and purports to be a log in portal for Complainant. Complainant also highlights that Respondent has sent emails to potential “investors” purporting to be from Complainant and using the MORGAN STANLEY marks, directing the investors to log into this site, all in connection with a fake investment offering. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent uses it to pass off as Complainant. Using a confusingly similar domain name to pass off as a complainant can demonstrate bad faith per Policy ¶ 4(b)(iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). The Panel recalls Complainant provides a screenshot showing the disputed domain name resolves to a website purporting to be a login portal for Complainant. The Panel also notes Respondent has sent emails to potential “investors” purporting to be from Complainant and using the MORGAN STANLEY marks, directing the investors to log into this site. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Next, Complainant contends Respondent registered the disputed domain name in bad faith as Respondent had constructive and actual knowledge of Complainant’s rights to the MORGAN STANLEY mark and its acronym MS prior to registration of the disputed domain names based on Complainant’s trademark registrations and the famous nature of the mark. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Complainant’s mark is famous by highlighting that Complainant has ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for at least the past two years, and was ranked numbers 26 and 33, respectively, in Brand Finances 2016 and 2017 Banking 500 global brands. The Panel infers, due to the notoriety of Complainant’s MORGAN STANLEY and MS marks and the manner of use of the disputed domain name that Respondent registered the disputed domain name in bad faith per 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 <mssecureplatform.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 25, 2021
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