Morgan Stanley v. Tommy Shelby
Claim Number: FA1912001873937
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Tommy Shelby (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msimfm.com>, registered with 1&1 IONOS SE.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2019; the Forum received payment on December 5, 2019.
On December 6, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <msimfm.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2019 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@msimfm.com. Also on December 6, 2019, 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. Respondent did however send an e-mail to the Forum, see below.
On December 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. With over 1,000 offices in over 40 countries and over 55,000 employees worldwide, Complainant offers truly global access to financial markets and advice. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark in the United States in 1982. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain name is identical or confusingly similar to its mark as it contains “MS”, a common abbreviation for Complainant’s mark, plus the letters “im” and “fm,” which are generic or descriptive initials for investment management and fund management (which are Complaint’s business), and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Respondent has not been authorized or licensed to use Complainant’s marks. 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. Instead, Respondent uses the disputed domain name to pass off as a subsidiary of Complainant in an attempt to collect personal information of Internet users. The subsidiary in question is MSIM Fund Management (Ireland) Limited, authorized in Ireland on 17 October 2018.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to pass off as a subsidiary of Complainant in furtherance of phishing.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its e-mail to the Forum, Respondent states, in pertinent part: “After reading through the information and being put in an awkward position it sounds to me like Morgan Stanley want the domain name that I have purchased. If they want my domain name they can purchase it from me at a premium as my website is now down and it is going to cost me money to get another web designer to restructure the whole site. We have no affiliation with Morgan Stanley and do not claim to do so. As they are a large organization they can purchase it from me directly.”
Complainant owns rights in the mark MORGAN STANLEY with rights dating back to 1982. The mark is famous. Complainant is often referred to by its acronym MS.
The disputed domain name was registered on August 29, 2019.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website attempts to pass off as a subsidiary of Complainant and to phish for users’ personal information. Respondent offered to sell the disputed domain name for an amount in excess of out of pocket costs.
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 disputed domain name contains “MS”, a common acronym for Complainant’s mark, plus the letters “im” and “fm,” which are generic or descriptive acronyms for investment management and fund management (which are Complainant’s business), and the “.com” gTLD. Generally, when a domain name incorporates an acronym of a complainant’s mark, Panels have been reluctant to hold that the domain name is identical or confusingly similar without establishing rights in the acronym. See Soc’y of St. Vincent de Paul v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). Here, Complainant argues that the term “MS” is a common acronym for the MORGAN STANLEY because: a Google search for “MORGAN STANLEY” and “MS” yields over 7 million hits, Complainant’s stock has been publicly traded on the New York Stock Exchange as “MS” for over 25 years, and Complainant is the owner of the domain name <ms.com>. The Panel finds these arguments, which have not been rebutted by Respondent, to be persuasive. Further, Complainant has been doing business as MSIM Fund Management since October 2018, well before the registration of the disputed domain name, and thus may have common law rights in the mark MSIM. For all these reasons, the Panel finds that Complainant holds rights in the acronym MS for the purposes of the Policy. Further, it is well understood that the addition of descriptive terms and a gTLD fails to distinguish a disputed domain name form a mark per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Respondent has not been authorized or licensed to use Complainant’s marks. Respondent is not commonly known by the disputed domain name: absent a reply, 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. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find that the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of its identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Tommy Shelby/MSIM FM.” Respondent has not provided affirmative evidence to support this identity. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to pass off as a subsidiary of Complainant in an attempt to collect personal information of Internet users. Specifically, Complainant provides screenshots of the resolving website showing that Respondent attempts to pass off as MSIM Fund Management (Ireland) Limited, a subsidiary of Complainant; the resolving website prompts users to provide personal information. Use of a domain name to pass off as a complainant may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii), in particular when used for phishing. 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.”). Therefore, the Panel finds 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 per Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent has no rights or legitimate interests in the dispute domain name.
Respondent has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to attempt to pass off as a subsidiary of Complainant in furtherance of phishing. Use of a disputed domain name to pass off as a complainant in furtherance of phishing can evince bad faith registration and use per Policy ¶ 4(b)(iv) and ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv) and/or ¶ a(iii).
Further, in its e-mail to the Forum, Respondent offered to sell the disputed domain name for an amount in excess of out of pocket costs. This is sufficient to establish bad faith registration and use pursuant to Policy Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the< gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Thus the Panel finds that Respondent registered and is using the disputed domain name in bad faith also pursuant to Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msimfm.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 30, 2019
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