Morgan Stanley v. Jony Sam
Claim Number: FA2301002029097
Complainant is Morgan Stanley (“Complainant”), USA, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondent is Jony Sam (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mrstanleywin.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 25, 2023; Forum received payment on January 25, 2023.
On January 26, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <mrstanleywin.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 January 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2023 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@mrstanleywin.com. Also on January 27, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, Morgan Stanley, provides financial, investment, and wealth management services internationally. Complainant has rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). The disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark as it abbreviates “Morgan” to “MR” and adds the generic word “win” and the “.com” generic top-level-domain name (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the MORGAN STANLEY mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant for purposes of phishing for account login information.
iii) Respondent registered and uses the disputed domain name in bad faith. The disputed domain name's resolving website disrupts Complainant’s business by causing initial interest confusion to Complainant’s users and passing off as Complainant in a phishing scheme. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on January 13, 2023.
2. Complainant has established rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992).
3. The disputed domain name's resolving website requests users' account information, uses Complainant’s historical logo and copies historical images from Complainant.
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 asserts rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). As Complainant provides evidence of trademark registration, the Panel finds Complainant has established rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Next, Complainant argues the disputed domain name <mrstanleywin.com> is identical or confusingly similar to Complainant’s MORGAN STANLEY mark as it abbreviates “Morgan” to “MR” and adds the generic word “win” and the “.com” gTLD. Abbreviating a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Sterling Jewelers Inc. v. KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that Respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks at it constitutes a mere abbreviation.). Additionally, adding a generic word or descriptive term and a gTLD also fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the MORGAN STANLEY mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “Jony Sam” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the MORGAN STANLEY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as Complainant for purposes of phishing for account information. Under Policy ¶¶ 4(c)(i) and (iii), panels have found that respondent’s attempts to use a disputed domain name to pass itself off as complainants is not a bona fide offering of goods or services or 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 Respondent’s resolving website requesting users' account information as well as using Complainant’s historical logo. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent registered it to pass off as Complainant in order to confuse users into thinking that Respondent is Complainant. Registration and use of a domain name in order to confuse users can be evidence of bad faith per Policy ¶ 4(b)(iii). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). The Panel recalls Complainant provided screenshots of Respondent’s resolving website using the Complainant’s MORGAN STANLEY mark in addition to historical logos. The Panel therefore finds that Respondent passes itself off as Complainant, and thus it registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Further, Complainant argues Respondent registered and uses the disputed domain name to impersonate Complainant in connection with a phishing scheme. Per Policy ¶ 4(a)(iii), registering and using a disputed domain name that fraudulently phishes for personal information may be evidence of bad faith. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). The Panel recalls that Complainant provided screenshots of Respondent’s resolving website requesting users' login username and password information. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark based on Respondent’s use of the MORGAN STANLEY mark and Respondent’s resolving website directly copying historical images from Complainant. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with knowledge of Complainant’s rights in its mark, which constitutes bad faith per 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 <mrstanleywin.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 23, 2023
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