Morgan Stanley v. Simon Fletcher
Claim Number: FA2112001977774
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Simon Fletcher (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ms-trade-floor.com>, registered with PSI-USA, Inc. dba Domain Robot.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2021; the Forum received payment on December 20, 2021.
On December 22, 2021, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <ms-trade-floor.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 December 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2022 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-trade-floor.com. Also on December 23, 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 January 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant, Morgan Stanley, provides financial, investment, and wealth management services.
Complainant has rights in the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
The <ms-trade-floor.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated an abbreviated version of Complainant’s MORGAN STANLEY mark, “MS,” and added the descriptive words “trade” and “floor,” hyphens, and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <ms-trade-floor.com> domain name because Respondent is not commonly known by the domain name and is not authorized to use Complainant’s MORGAN STANLEY mark. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain to attempt to pass itself off as affiliated with Complainant. Respondent’s at-issue domain name has been used to impersonate Complainant to attempt to scam consumers with fake investments by using the domain name to host email. Respondent used the at-issue domain name to host email sent to a potential investor purporting to be from Complainant which included Complainant’s names, marks, and address, and likely offered fake investment opportunities.
Respondent has registered and uses the <ms-trade-floor.com> domain name in bad faith because Respondent uses the at-issue domain name to create initial interest confusion and disrupt Complainant’s business. In addition, Respondent had constructive and/or actual knowledge of its rights in the MORGAN STANLEY mark, which is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MORGAN STANLEY trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MORGAN STANLEY trademark.
Respondent uses email associated with the at-issue domain name to impersonate Complainant and facilitate fraud.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its MORGAN STANLEY trademark. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <ms-trade-floor.com> domain name contains a common abbreviation of Complainant’s MORGAN STANLEY, “MS,” followed by a hyphen, the suggestive term “trade,” another hyphen, and the suggestive term “floor” (or the term “-trade-floor”). The domain name concludes with a domain name-necessary top-level, here “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <ms-trade-floor.com> domain name from Complainant’s MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). In fact, the inclusion of terms suggestive of Complainant’s business only adds to any confusion between the domain name and Complainant’s MORGAN STANLEY mark. Therefore, the Panel concludes that Respondent’s <ms-trade-floor.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY trademark. See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”); see also 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, Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”).
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 the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Simon Fletcher” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the at-issue domain name or by MORGAN STANLEY. The Panel therefore concludes that Respondent is not commonly known by <ms-trade-floor.com> for the purposes of Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Respondent uses the confusingly similar <ms-trade-floor.com> domain name to host email wherein Respondent poses as Complainant. Respondent is intent on misleading third parties as to the sponsorship of the at-issue domain name and thus email from such domain in furtherance of impersonating Complainant. Respondent’s scheme ultimately seeks to defraud potential investors who mistakenly believe they are dealing with Complainant in connection with phony investment opportunities. Respondent’s use of the confusingly similar domain name to pass itself off as Complainant to facilitate fraud indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <ms-trade-floor.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent registered and used the <ms-trade-floor.com> domain name to pass itself off as Complainant via emails originating from the confusingly similar at-issue domain name. Respondent’s emails pretend to be from Complainant employees and are ultimately used by Respondent to attempt to defraud third parties. Respondent’s use of the domain name in this manner unmistakably shows Respondent’s bad faith per Policy ¶ 4(a)(iii). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that the respondent’s use of <chevron-corps.com> to impersonate an executive of the complainant in emails is in opposition to the complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)).
Additionally, Respondent registered <ms-trade-floor.com> knowing that Complainant had trademark rights in the MORGAN STANLEY mark. Respondent’s prior knowledge is evident from the worldwide notoriety of Complainant’s trademark and from Respondent’s use of the domain name to host email pretending to be from Complainant as mentioned elsewhere herein. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <ms-trade-floor.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ms-trade-floor.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 18, 2022
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