Morgan Stanley v. Anonymize, Inc.
Claim Number: FA2108001957728
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 <msamlservices.com>, which is registered with Epik Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2021; the Forum received payment on August 2, 2021.
On August 3, 2021, Epik Inc. confirmed by e-mail to the Forum that the <msamlservices.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 August 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2021, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@msamlservices.com. Also, on August 10, 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 September 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers financial, investment and wealth management services to a broad spectrum of institutional and retail clients.
Complainant holds a registration for the MORGAN STANLEY service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,707,196, registered August 11, 1992, and renewed most recently as of July 11, 2012.
Respondent registered the domain name <msamlservices.com> on or about June 15, 2021.
The domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
The domain name contains the two-letter combination “MS”, a common acronym for Complainant’s MORGAN STANLEY mark, which is also its stock ticker symbol, and the three-letter combination “aml” (a common abbreviation for anti-money laundering).
Respondent has not been commonly known by the MORGAN STANLEY mark or the MS acronym or the disputed domain name.
Complainant has not authorized Respondent to use the MORGAN STANLEY mark or its acronym MS or the disputed domain name.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent fails to make any active use of it.
It is likely that Respondent will at some point employ the domain name to pass itself off as Complainant online in furtherance of a financial scam.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent has a history of cybersquatting.
Respondent registered the domain name in order to profit from Internet user confusion.
Respondent knew of Complainant’s rights in the MORGAN STANLEY mark prior to registering the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the MORGAN STANLEY service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel , FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <msamlservices.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. The domain name contains the two-letter combination “MS”, a common acronym for Complainant’s mark, which is also its stock ticker symbol, plus the generic term “service,” which relates to the nature of Complainant’s business, and the three-letter combination “aml” (an abbreviation for “anti-money laundering”), a reference to one of the essential regulatory functions of Complainant’s business, as well as the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Morgan Stanley v. Stacey Wilson, FA 1938103 (Forum April 23, 2021) (a panel there finding the domain name <msfundservlces.com> to be confusingly similar to Complainant’s MORGAN STANLEY 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 … mark. Thus, the Panel finds [that] Respondent’s disputed domain name is confusingly similar to Complainant’s … mark per Policy ¶ 4(a)(i).
Further see Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Finally, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the disputed <msamlservices.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <msamlservices.com> domain name, and that Complainant has not authorized Respondent to use the MORGAN STANLEY mark or its acronym MS. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Anonymize, Inc.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent fails to use the <msamlservices.com> domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that Respondent fails to make any active use of it at all. In the circumstances here presented, we conclude that Respondent’s passive holding of the domain name constitutes neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018):
[B]oth Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
While the challenged domain name has been passively held for its entire existence, such inactive use can, and here does, constitute registration and use which is not countenanced by the Policy. This is because the evidence establishes that Respondent has no rights to or legitimate interests in the domain name, and because there is nothing in the record indicating that Respondent has made, or is now making, preparations to use the domain name in any legitimate undertaking, and because it is difficult-to-impossible to conceive of any legitimate active use to which it might be put. On the point, see, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).
See also CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <msamlservices.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 2, 2021
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