Morgan Stanley v. Abramov YUrii Vitalevich
Claim Number: FA2107001956060
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Abramov YUrii Vitalevich (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ms-funds.net>, (‘the Domain Name’) registered with OnlineNIC, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2021; the Forum received payment on July 21, 2021.
On July 22, 2021, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <ms-funds.net> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 July 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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-funds.net. Also on July 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 August 13, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
Complainant is the owner of the well-known mark MORGAN STANLEY with first use recorded as 1935 and registered in, inter alia, the USA for financial services. It registered <morganstanley.com> in 1996.
The Domain Name registered in 2021 is confusingly similar to the Complainant’s MORGAN STANLEY mark with a hyphen, the generic word ‘funds’ and the gTLD “.net” none of which distinguish the Domain Name from the Complainant’s mark. That the disputed domain name abbreviates the MORGAN STANLEY Mark to “MS” does not obviate the confusing similarity.
“MS” has been for decades a common initialism of Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years. Complainant has been the owner of the domain name ms.com for over 25 years. This domain name resolves to Complainant’s primary website at <www.morganstanley.com>. Complainant owns numerous domain names worldwide containing or comprising “MSFUND” or “MSFUNDS,” including <msfund.cn>, <msfund.com>, <msfund.com.cn>, <msfunds.cn>, <msfunds.com>, and <msfunds.com.cn>.
The Respondent is not commonly known by the Domain Name and has not been authorized by the Complainant to use its mark. The Domain Name resolves to a website purporting to offer financial services and investment opportunities. The use of the Domain Name in connection with the offering of services that are identical and/or closely related to those services offered by Complainant under a name and mark identical or confusing similar to Complainant’s marks is not a legitimate or bona fide use of a domain name. The Respondent has no rights or legitimate interests in the Domain Name. It is registration and use in bad faith with actual knowledge of the rights of the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the well-known mark MORGAN STANLEY with first use recorded as 1935 and registered in, inter alia, the USA for financial services. It registered <morganstanley.com> in 1996.
Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” and Complainant has been the owner of the domain name ms.com both for over 25 years. Ms.com resolves to Complainant’s primary website at <www.morganstanley.com>. Complainant owns numerous domain names worldwide containing ‘ms’ including <msfund.cn>, <msfund.com>, <msfund.com.cn>, <msfunds.cn>, <msfunds.com>, and <msfunds.com.cn>. as such the sign MS has obtained a secondary meaning for financial services and the Complainant owns common law rights in the MS mark.
The Domain Name registered in 2021 has been pointed to a competing website offering financial services.
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 Domain Name consists of the mark MS in which the Complainant has owned common law rights for over 25 years, a hyphen, the generic term ‘funds’ and the gTLD “.net” which does not distinguish the Domain Name from the Complainant’s mark.
Adding a hyphen does not distinguish a domain name from the Complainant’s mark. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).).
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘funds’ to the Complainant's mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy.
The gTLD “.net” does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s MS mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its MS mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial and so cannot be legitimate noncommercial fair use.
The web site to which the Domain Name redirects is a financial services site. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to offer services which competed with the Complainant's business did not constitute a bona fide use of goods and services.). Since the use is commercial this cannot be a legitimate noncommercial fair use.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s MS mark which has goodwill for financial services in relation to competing services without further explanation.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of that web site or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to offer car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).
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-funds.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 13, 2021
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