Morgan Stanley v. Anonymize, Inc.
Claim Number: FA2106001952207
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 NAMES
The domain names at issue are <msamlie.com>, <msclientservicesie.com> and <msprivateie.com>, registered with Epik Inc..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2021; the Forum received payment on June 22, 2021.
On June 23, 2021, Epik Inc. confirmed by e-mail to the Forum that the domain names <msamlie.com>, <msclientservicesie.com> and <msprivateie.com> are registered with Epik Inc. and that Respondent is the current registrant of the names. 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 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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, as well as to the attention of postmaster@msamlie.com, postmaster@msclientservicesie.com, postmaster@msprivateie.com. Also, on June 24, 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.
Complainant has submitted an Additional Submission, which has been determined to be complete and timely under the requirements of the Policy and its associated Rules.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities controlling the domain names at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that all three identified domain name registrants be treated in this proceeding for all purposes as a single Respondent. In support of this request, Complainant asserts the following:
(1) all three domains were registered on the same date;
(2) all of them use the same domain name registrar;
(3) all of them use the same Internet Service Provider;
(4) all of them use the same proxy service;
(5) each domain begins with “ms;” and
(6) all are being, or have been, used as part of an investment scam by which Respondent impersonates Complainant.
Because Respondent does not refute any of these assertions, and because it appears from the asserted facts that they cannot be explained by reference to mere coincidence, the Panel determines that the request must be granted. Accordingly, this Decision will refer to the collective of identified respondents throughout as a single Respondent.
A. Complainant
Complainant’s Complaint and Additional Submission together allege, inter alia, the following:
Complainant is a global financial services company.
Complainant also holds a registration for the CLIENTSERV service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,322,252, registered February 22, 2000, and renewed most recently as of May 6, 2020.
Respondent registered each of the domain names <msprivateie.com>, <msclientservicesie.com> and <msamlie.com> on June 17, 2021.
Each of the domain names is confusingly similar to one or both of Complainant’s registered marks.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use its MORGAN STANLEY or CLIENTSERV marks in a domain name.
Respondent does not use the domain names for in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent holds the domain names, each of which resolves to an inactive website, while employing them to defraud consumers with fake investment opportunities.
Respondent lacks both rights to and legitimate interests in the domain names.
Respondent has exhibited a pattern of bad faith registration and use of the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent registered the domain names while knowing of Complainant’s rights in the MORGAN STANLEY and CLIENTSERV marks.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in both the MORGAN STANLEY trademark and the CLIENTSERV service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of each of those marks with a national trademark authority, the USPTO. See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that a UDRP complainant’s registration of its mark with the USPTO sufficiently demonstrated its rights in the mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s <msclientservicesie.com>, <msamlie.com> and <msprivateie.com> domain names is confusingly similar to one of Complainant’s marks or a combination of the two of them. Specifically, each of the domain names incorporates “ms,” a common abbreviation for the MORGAN STANLEY trademark, and “ie,” a short-form country code for Ireland. One of the domain names contains the term “client services,” which interprets Complainant’s CLIENTSERV service mark. Another of them features the term “aml,” a common abbreviation for “anti-money-laundering,” a reference to an aspect of Complainant’s business. The third contains the term “private,” which relates to another aspect of Complainant’s business. And all of the domain names include the generic Top Level Domain (“gTLD”) “.com.” These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.
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 [of Policy ¶ 4(a)].
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Further see Ctrader Limited v. Ibnu Rusdi and Private Registration, D2013-1800 (WIPO December 2, 2013):
It is settled case-law under the Policy that a domain name consisting of a trademark followed by a few letters is, in general, confusingly similar to the trademark…. That case-law applies to the present case, in particular[,] because the two letters “ts” that follow the Complainant’s mark can reasonably be held to stand for an abbreviation of the Complainant’s business, which is the production of “trading software”.
Finally, see Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum September 6, 2007):
[T]he addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in any of the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain names <msprivateie.com>, <msclientservicesie.com> and <msamlie.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the MORGAN STANLEY and CLIENTSERV marks in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Anonymize Inc.,” which does not resemble any of them. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent holds the contested domain names, each of which resolves to an inactive website, while employing them to defraud consumers with fake investments opportunities. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy. See, for example, L’Oréal v. Contact Privacy Inc., D2018-1937 (WIPO October 12, 2018):
the registrant has impersonated one of the Complainant’s employees to send fraudulent emails. In these emails, the Respondent has offered false franchise opportunities ….
[T]he Panel agrees with the Complainant that the activities of impersonating the Complainant and of offering fake franchise opportunities cannot be considered as bona fide activities, but rather as [a] phishing scheme, a practice intended to defraud consumers or employees into revealing personal and financial information…. Accordingly, the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name[,] and [,] consequently, the second element of paragraph 4(a) of the Policy is established.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has used the disputed <msprivateie.com>, <msclientservicesie.com> and <msamlie.com> domain names, which we have found to be confusingly similar to one or both of Complainant’s MORGAN STANLEY and CLIENTSERV marks, to profit illicitly from the confusion thus caused among internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, Virgin Enterprises Limited v. Registration Private, Domains By Proxy, LLC, D2021-1267 (WIPO June 30, 2021):
Respondent has registered and used the disputed domain name … in an attempt to attract traffic to the website to which the disputed domain name redirects by deceiving Internet users that the disputed domain name and the bitcoin investment scheme featured on the website to which it redirects are related to or endorsed by the Complainant …. This supports a finding of bad faith conduct under Paragraph 4(b)(iv) of the Policy…. Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <msprivateie.com>, <msamlie.com> and <msclientservicesie.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 28, 2021
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