Morgan Stanley v. 哈 哈
Claim Number: FA2206002001008
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is 哈 哈 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msbtc06.com>, registered with Name.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2022; the Forum received payment on June 20, 2022.
On Jun 22, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <msbtc06.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 June 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@msbtc06.com. Also on June 23, 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 July 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Morgan Stanley, offers financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11,1992).
2. Respondent’s <msbtc06.com>[i] domain name is identical or confusingly similar to the mark it incorporates as it uses the abbreviation “ms” for Morgan Stanley, adds the abbreviation “btc” meaning “bitcoin”, appends the numbers “06” and adds the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <msbtc06.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the domain name.
4. Respondent does not use the domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant in furtherance of a phishing scheme.
5. Respondent registered and uses the <msbtc06.com> domain name in bad faith. Respondent engages in a pattern of bad faith while disrupting Complainant’s business.
6. Additionally, Respondent capitalizes on the confusing similarity between the mark and the domain name by passing off as Complainant and phishing for users’ information.
7. Furthermore, Respondent engaged in opportunistic bad faith and had constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <msbtc06.com> domain name and that Respondent registered and uses the domain name 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 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”).
Complainant claims rights in the MORGAN STANLEY mark through its registration with the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11,1992). Under Policy ¶ 4(a)(i), registration with the USPTO is generally considered sufficient in demonstrating rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <msbtc06.com> domain name is identical or confusingly similar to the MORGAN STANLEY mark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the mark it incorporates where it includes an abbreviation of the mark and adds the “.com” gTLD. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”). Additionally, adding letters relating to a complainant’s business is insufficient in differentiating the domain name from the mark. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Furthermore, adding a number to a domain name is generally considered confusingly similar to the mark it incorporates. See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”). The <msbtc06.com> domain name incorporates Complainant’s mark by abbreviating the Morgan Stanley mark into the letters “ms”, while adding the letters “btc”, meaning bitcoin, appending the numbers “06”, and adding the “.com” gTLD. Therefore, the Panel holds that Respondent’s domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <msbtc06.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <msbtc06.com> domain name, nor has Complainant authorized or licensed Respondent to use its mark in the domain name. Under Policy ¶ 4(c)(ii), WHOIS information may demonstrate that a respondent is not commonly known by a domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“[T]he pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” 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).”). The WHOIS information identifies Respondent as “哈哈”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the <msbtc06.com> domain name. Thus, the Panel holds that Respondent is not commonly known by the <msbtc06.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <msbtc06.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a domain name incorporating the mark of another to pass off as a complainant in furtherance of a phishing scheme does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the <msbtc06.com> domain name’s resolving website, which displays Complainant’s marks and purports to offer financial-related services, while offering a fraudulent login page to gain access to users’ personal information. Therefore, Respondent is not using the <msbtc06.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <msbtc06.com> domain name in a pattern of bad faith. Under Policy ¶ 4(b)(ii), a pattern of bad faith registration and use may be established where a respondent has prior UDRP proceedings that resulted in findings of bad faith and transfer of the domain name. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Complainant provides examples of recent UDRP proceedings against the Respondent, where the domain names were in similar format as the current case resulting in findings of bad faith and transfer of the domain names. Thus, the Panel holds that Respondent registered and uses the <msbtc06.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the <msbtc06.com> domain name in bad faith by capitalizing on the confusing similarity between the disputed domain name and Complainant’s mark. Under Policy ¶ 4(b)(iv), taking advantage of the confusing similarity between the domain name and the mark may be evidence of bad faith registration and use. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Respondent’s domain name incorporates an abbreviation of the MORGAN STANLEY mark while adding the letters, “btc” in relation to Complainant’s business, and passing off as Complainant at its resolving website. Therefore, the Panel further holds Respondent registered and uses the <msbtc06.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant contends that Respondent registered and uses the <msbtc06.com> domain name in bad faith by engaging in a phishing scheme. Under Policy ¶ 4(a)(iii), engaging in phishing is evidence of bad faith registration and use. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). The record contains screenshots of the resolving webpage which shows that Respondent purports to offer financial-related services while offering a fraudulent login page to gain access to users’ personal information. Therefore, Respondent registered and uses the <msbtc06.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(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 <msbtc06.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 8, 2022
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