Morgan Stanley v. Domain Administrator
Claim Number: FA2203001986424
Complainant is Morgan Stanley ("Complainant"), United States, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domain Administrator ("Respondent"), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loginmorganstanleyclientserv.com>, registered with Sav.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2022; the Forum received payment on March 1, 2022.
On March 2, 2022, Sav.com, LLC confirmed by email to the Forum that the <loginmorganstanleyclientserv.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC 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 March 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@loginmorganstanleyclientserv.com. Also on March 3, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 March 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a global financial, investment, and wealth management services company. Complainant has more than 1,000 offices in over 40 countries, and over 55,000 employees worldwide. Complainant has used MORGAN STANLEY and related marks in connection with this business since at least as early as 1935. Complainant's MORGAN STANLEY mark is registered in countries around the world, including the United States. Complainant asserts that MORGAN STANLEY mark is famous and has become well known to consumers globally as a result of its extensive use and promotion. In addition, Complainant has used the CLIENTSERV mark since at least as early as 1999 in connection with online financial management services, and owns a United States trademark registration for CLIENTSERV in standard character form. Complainant uses the domain name <login.morganstanleyclientserv.com> for a login page for its clients.
Respondent registered the disputed domain name <loginmorganstanleyclientserv.com> in February 2022. The domain name is being used for a website composed of links to third parties that offer competing financial services. Complainant alleges that the website attempts to disseminate adware and that the domain name is being offered for sale. Complainant states that Respondent is not commonly known by the disputed domain name, is not a licensee of Complainant nor authorized to use Complainant's name or mark, and has no relationship whatsoever to Complainant.
Complainant contends on the above grounds that the disputed domain name <loginmorganstanleyclientserv.com> is confusingly similar to its MORGAN STANLEY and CLIENTSERV marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <loginmorganstanleyclientserv.com> incorporates Complainant's registered MORGAN STANLEY and CLIENTSERV trademarks (omitting the space from the former), adding the generic term "login" and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's marks. See, e.g., Morgan Stanley v. Yousuf Mamun, FA 1972843 (Forum Dec. 7, 2021) (finding <morganstanleyclientserv.me> confusingly similar to MORGAN STANLEY and CLIENTSERV); Morgan Stanley v. George Washere, FA 1895719 (Forum June 13, 2020) (finding <loginmorganstanleyclientserv.com> confusingly similar to MORGAN STANLEY and CLIENTSERV); Morgan Stanley v. Comdot Internet Services Private Ltd., FA 1178866 (Forum June 9, 2008) (finding <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com> confusingly similar to MORGAN STANLEY and CLIENTSERV). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered marks without authorization. It is being used for a website that obviously is intended to profit by displaying advertisements for competing services to clients of Complainant who are seeking Complainant's own login page but mistakenly omit a period from the address. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Morgan Stanley v. Comdot Internet Services Private Ltd., supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating two of Complainant's registered marks without authorization, and is using the domain name to display links to competing services, presumably for commercial gain. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Morgan Stanley v. Tom Franky, FA 1921451 (Forum Dec. 16, 2020) (finding bad faith in similar circumstances); Morgan Stanley v. Comdot Internet Services Private Ltd., supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loginmorganstanleyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 30, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page