DECISION
Morgan Stanley v. Anonymize, Inc.
Claim Number: FA2106001951998
PARTIES
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Anonymize, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ms-privateservices.com>, registered with Epik Inc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on June 21, 2021; the Forum received payment on June 21, 2021.
On June 22, 2021, Epik Inc. confirmed by e-mail to the Forum that the <ms-privateservices.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2021 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@ms-privateservices.com. Also on June 22, 2021, 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 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
1. Complainant is a worldwide financial services and investment firm. Complainant has rights in the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office
(“USPTO”) (e.g. Reg. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Respondent’s <ms-privateservices.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates a popular abbreviation of the mark and adds the words “private services”, as well as the “.com” generic top-level domain (“gTLD”).
2. Respondent lacks rights and legitimate interests in the <ms-privateservices.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name and passes off as Complainant in emails in furtherance of a fraudulent scheme.
3. Respondent registered and uses the <ms-privateservices.com> domain name in bad faith. Respondent has exhibited a pattern of bad faith registration and use. Additionally, Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant in emails. Furthermore, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark. Finally, Respondent inactively holds the disputed domain name.
B. Respondent
1. Respondent failed to submit a response in this proceeding.
FINDINGS
1. Respondent’s <ms-privateservices.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <ms-privateservices.com> domain name.
3. Respondent registered or used the <ms-privateservices.com> domain name in bad faith.
DISCUSSION
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”).
Identical and/or Confusingly Similar
Complainant claims rights in the MORGAN STANLEY mark through its registrations with the USPTO (Reg. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, the Panel agrees and finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ms-privateservices.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates an abbreviated version of the mark and adds a hyphen, the words “private services”, and the “.com” gTLD to the end of the mark. Under Policy ¶ 4(a)(i), incorporating an abbreviated version of a mark, specifically the MS abbreviation of the MORGAN STANLEY mark, and adding a hyphen, generic or descriptive words, and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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).”); see additionally Morgan Stanley v. Stacy Wilson/hsbc, FA2103001938103 (Forum Apr. 23, 2021) (finding that “the [<msfundservices.com>] domain name is confusingly similar to a mark in which Complainant has rights . . .”). Therefore, the Panel agrees and finds Respondent’s domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 argues that Respondent does not use the <ms-privateservices.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name and sends phishing emails. Under Policy ¶¶ 4(c)(i) or (iii), inactively holding a disputed domain name’s resolving website while sending fraudulent emails with the domain is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the disputed domain name’s resolving website, which features no content but a generic message to contact the domain owner. See Compl. Ex. 12. Complainant also claims that Respondent is using, and has used other previous domain names for email phishing schemes. Therefore, the Panel agrees and finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), where a Respondent has had past domain names transferred from their possession in a UDRP proceeding, past panels have found a pattern of bad faith registration and use. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Complainant cites the case Morgan Stanley v. Henry Freeman/Anonymize, Inc./Ellis E Warner, FA 1943140 (Forum June 1, 2021) as an example of Respondent’s past cases. See Compl. p. 9. Therefore, the Panel agrees and finds Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <ms-privateservices.com> domain name in bad faith by passing off as Complainant in furtherance of a phishing scheme. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant in emails in furtherance of a phishing scheme is generally considered evidence of bad faith disruption for commercial gain. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant claims Respondent is using the disputed domain name to send emails for a fraudulent bond scheme. The Panel agrees and finds Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <ms-privateservices.com> domain name with knowledge of Complainant’s rights in the MORGAN STANLEY mark. Under Policy ¶ 4(a)(iii), while constructive knowledge is generally insufficient in establishing bad faith, actual knowledge may be sufficient, and may be demonstrated through Respondent’s incorporation of a mark or its abbreviation into a disputed domain name, along with the fame of the mark. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see additionally United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). The Panel recalls that the disputed domain name incorporates a popular abbreviation of Complainant’s MORGAN STANLEY mark, while Complainant claims the MORGAN STANLEY mark is well known worldwide. The Panel agrees and finds Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent registered and uses the <ms-privateservices.com> domain name in bad faith by inactively holding the disputed domain name. Inactively holding a disputed domain name is generally considered evidence of bad faith under Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which features no content but a generic message directing the user to contact the domain name owner. See Compl. Ex. 12. The Panel agrees and finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ms-privateservices.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 29, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page