Morgan Stanley v. Franck petitgas
Claim Number: FA2205001994594
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Franck petitgas (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalmorgan-stanleyinvestment.com>, registered with NameCheap, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2022; the Forum received payment on May 2, 2022.
On May 2, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <globalmorgan-stanleyinvestment.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@globalmorgan-stanleyinvestment.com. Also on May 3, 2022, 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 May 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in MORGAN STANLEY. Complainant holds national registrations for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides financial and investment management services by reference to the trademark, MORGAN STANLEY, registered, inter alia, with United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,707,196 from August 11, 1992;
2. the disputed domain name was registered on May 1, 2022 and has been used to redirect Internet users to Complainant’s client log-in webpage; and
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark MORGAN STANLEY with the USPTO, a national trademark authority.
For the purposes of comparison of the domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain alters the trademark by addition of the words, “global” and “investment,” both descriptive within the context of Complainant’s business under the trademark. The trademark is the distinctive part of the domain name and the Panel finds the domain name to be confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) determining confusing similarity exists where a disputed domain name contains a complainant’s mark and differs only by the addition of a generic or descriptive matter and top-level domain); Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC, FA 1246046 (Forum Mar. 24, 2009) holding addition of generic words “bank” and “online” to Complainant’s MORGAN STANLEY mark did not obviate confusion; Morgan Stanley v. Ke Zhao, FA 1317816 (Forum May 17, 2010) finding “Respondent’s <morganstanleyhedgefunds.com> domain name to be confusingly similar to Complainant’s MORGAN STANLEY mark”).
Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
In consequence of these administrative proceedings, the Registrar disclosed the name of the domain name registrant as “Franck Petitgas”. Although this is the name of Complainant’s Global Head of Investment Banking there is no likelihood that the domain name was created by Mr Petitgas. Complainant explicitly states that he did not do so. The Panel finds that use of Mr. Petitgas’s name is simply to further the confusion created by the use of the domain name which is, as the Complaint explains, to redirect Internet users to:
https://login.morganstanleyclientserv.com/ux/ which is part of a client portal website owned by Complainant, which includes the words “Morgan Stanley”, and “Log in to your account”. By redirecting and resolving the disputed domain name to one of Complainant’s official websites, Respondent is using the disputed domain name in a manner that is likely to mislead consumers into mistakenly believing that the disputed domain name is authorized, operated or owned by Complainant.
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the domain name and so the onus shifts to Respondent. Absent a Response, that onus is not met and so the Panel finds that Complainant has met the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Paragraph 4(b) of the Policy sets out four circumstances which are to be taken as evidence of the registration and use of a domain name in bad faith. The Panel finds that paragraph 4(b)(iv) has application. It states:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel has already found the domain name to be confusingly similar to the trademark. The use on the domain name is in all likelihood for commercial gain, by way of phishing, or some other means. The Panel finds that Respondent targeted Complainant’s trademark and business and so finds registration and use in bad faith (see, for example, See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use under paragraph 4(b)(iv)).
Even if there is no commercial gain to Respondent the Panel finds, as separate matters, registration in bad faith and use in bad faith thus satisfying paragraph 4(b) of the Policy.
The Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that <globalmorgan-stanleyinvestment.com> be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 2, 2022
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