Morgan Stanley v. fred Baldwin / Balwin Corp / Jamie WIlson / Anonymize, Inc.
Claim Number: FA2108001959884
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is fred Baldwin / Balwin Corp / Jamie WIlson / Anonymize, Inc. (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <retailclientservicesms-uk.com>, <amlservicesms-au.com>, <retailclientsms-uk.com>, and <retailclientsms-au.com>, (‘the Domain Names’) registered with 1API GmbH; OwnRegistrar, Inc.; Epik Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2021; the Forum received payment on August 17, 2021.
On August 18, 2021; August 25, 2021, 1API GmbH; OwnRegistrar, Inc.; Epik Inc. confirmed by e-mail to the Forum that the <retailclientservicesms-uk.com>, <amlservicesms-au.com>, <retailclientsms-uk.com>, and <retailclientsms-au.com> Domain Names are registered with 1API GmbH; OwnRegistrar, Inc.; Epik Inc. and that Respondent is the current registrant of the names. 1API GmbH; OwnRegistrar, Inc.; Epik Inc. has verified that Respondent is bound by the 1API GmbH; OwnRegistrar, Inc.; 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 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@retailclientservicesms-uk.com, postmaster@amlservicesms-au.com, postmaster@retailclientsms-uk.com, postmaster@retailclientsms-au.com. Also on August 25, 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 15, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 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.” Complainant contends that the Domain Names were registered within a short time of each other and use the same hosting ISP in Ukraine. Each Domain Name contains the “ms” term and combinations of the same or similar generic or descriptive words in various orders and bear a remarkable similarity to domain names the subject of recent decisions under the UDRP in the Complainant’s favour where very similar domains were found to have been used for phishing scams (‘the Previous UDRP Cases’). <retailclientservicesms-uk.com> and <retailclientsms-uk.com> were registered on the same day August 8, 2021 with the exact same details for Respondent given in Aberdeenshire. The other two domain names <amlservicessms-au.com> and <retailclientsms-au.com> were also registered on the same day as each other August 5, 2021 and within three days of the other two domain names in this Complaint and <amlservicessms-au.com> is also registered with a Respondent in Aberdeenshire. <retailclientsms-au.com> is registered with the same Respondent/Registrar as one of the Previous UDRP cases. Looking at all of the evidence presented by the Complainant the Panel believes that it is more likely than not that the same entity is behind the Domain Names and has registered them using different aliases and so the Domain Names can all be dealt with in this Complaint.
A. Complainant
The Complainant’s contentions can be summarized as follows:
Complainant is the owner of the well-known mark MORGAN STANLEY with first use recorded as 1935 and registered in, inter alia, the USA for financial services. It registered morganstanley.com in 1996.
The Domain Names registered in 2021 are confusingly similar to the Complainant’s MORGAN STANLEY mark with a hyphen, generic terms (‘au’ or ‘uk’ country codes for Australia and the UK, respectively, locations where Complainant has offices and does business, ‘aml’ which is an abbreviation for anti-money laundering, ‘services’, ‘retail’ and/or ‘client(s)’) and the gTLD “.com” none of which distinguish the Domain Names from the Complainant’s mark. That the Domain Names abbreviate the MORGAN STANLEY Mark to “MS” does not obviate the confusing similarity.
“MS” has been for decades a common initialism of Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years. Complainant has been the owner of the domain name ms.com for over 25 years. This domain name resolves to Complainant’s primary website at <www.morganstanley.com>. Complainant owns numerous domain names worldwide containing “MS”.
The Respondent is not commonly known by the Domain Names and has not been authorized by the Complainant to use its mark. The Domain Names are not connected to active sites, but there is evidence that they are connected to the same Respondent involved in phishing scams in the Previous UDRP Cases. Passive holding and fraudulent use are not legitimate or bona fide uses of a domain name. The Respondent has no rights or legitimate interests in the Domain Names. This is registration and use in bad faith with actual knowledge of the rights of the Complainant and shows a pattern of activity of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the well-known mark MORGAN STANLEY with first use recorded as 1935 and registered in, inter alia, the USA for financial services. It registered <morganstanley.com> in 1996.
The Domain Names registered in 2021 do not resolve to active web sites, but are more likely than not to be connected to the same Respondent found to be involved in phishing in Previous UDRP Cases.
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 Domain Names consist of the mark MS in which the Complainant has owned common law rights for over 25 years, a hyphen, the generic terms ‘au’, ‘uk’, ‘aml’ which is an abbreviation for anti-money laundering, ‘services’, ‘retail’ and/or ‘client(s)’, and the gTLD “.com” none of which distinguishes the Domain Names from the Complainant’s mark.
Adding a hyphen does not distinguish a domain name from the Complainant’s mark. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).).
Previous panels have found confusing similarity when a respondent adds generic terms to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms ‘au’, ‘uk’, ‘aml’, ‘services’, ‘retail’ and/or ‘client(s)’ to the Complainant's mark does not distinguish the Domain Names from the Complainant's trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s MS mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Names do not resolve to active web sites showing no evidence of a bona fide offering of goods or services or a legitimate non-commercial or fair use in this regard. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i).).
The Respondent appears to be connected to registration of other domain names used for a network of phishing scams targeting the Complainant. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (finding that ‘Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use’.). It is noted that while there is no actual evidence that the Domain Names in this complaint have been actually used for phishing scams, such use cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use in any event.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not provided a Response explaining why it should be allowed to register a series of similar domain names containing the Complainant’s mark which is distinctive and not a descriptive term. Whilst there is no evidence that the Domain Names in this case have been actually used for phishing scams the Respondent has registered multiple domain names the subject of this Complaint targeting the Complainant and there is evidence that the Respondent is connected with other domain names the subject of Previous UDRP Cases which have been used to target the Complainant and which have been held to have been registered and used in bad faith showing a pattern of activity on behalf of the Respondent which disrupts the Complainant’s business.
Additionally, the overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of domain names containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(ii) and (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 <retailclientservicesms-uk.com>, <amlservicesms-au.com>, <retailclientsms-uk.com>, and <retailclientsms-au.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 16, 2021
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