national arbitration forum

 

DECISION

 

Morgan Stanley v. MSOB c/o James

Claim Number: FA1112001418178

 

PARTIES

Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is MSOB c/o James (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <morganstanleyoffshore.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he or she 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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2011; the National Arbitration Forum received payment on December 2, 2011.

 

On December 3, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <morganstanleyoffshore.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2011 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@morganstanleyoffshore.com.  Also on December 5, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:

 

1.    Respondent’s <morganstanleyoffshore.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.

 

2.    Respondent does not have any rights or legitimate interests in the <morganstanleyoffshore.com> domain name.

 

3.    Respondent registered and used the <morganstanleyoffshore.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Morgan Stanley, is a global provider of financial, investment, and wealth management services.  Complainant owns multiple trademark registrations for the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196 registered August 11, 1992).  Complainant uses the mark to brand its financial products in many of its global advertising and promotional campaigns and as its primary domain name at morganstanley.com.

 

Respondent, MSOB c/o James, registered the disputed domain name on November 30, 2010.  The disputed domain name resolves to a website purporting to be offered by “Morgan Stanley Offshore Bank,” which seeks to get Internet users to open an account by providing personal and financial information.  The purpose of the website is to garner personal and financial information from Internet users through the use of a “phishing” scheme.

 

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that is has established its rights in the MORGAN STANLEY mark by registering it with the USPTO (e.g. Reg. No. 1,707,196 registered August 11, 1992).  Complainant has submitted sufficient evidence in the form of trademark certificates to verify that it is the rightful owner of the duly registered mark.  Therefore, the Panel finds that Complainant has established its rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i) by registering it with the USPTO.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant also claims that Respondent’s <morganstanleyoffshore.com> domain name is confusingly similar to its MORGAN STANLEY mark.  The disputed domain name includes the entire mark while merely adding the generic top-level domain (“gTLD”) “.com” and the generic banking term “offshore,” and removing the space between the terms.  The Panel finds that the addition of a gTLD and a generic term along with the removal of a space, does not remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has made, what the Panel finds to be, a prima facie case against Respondent indicating that it lacks rights or legitimate interests in the disputed domain name.  As a result, Respondent now bears the burden of proving that it does have rights or legitimate interests in the disputed domain name.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  Respondent has failed to file a response in this matter, which due to the shift of the burden under Policy ¶ 4(a)(ii), allows this Panel to assume that Respondent lacks rights or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  The Panel will examine the entire record and make findings in accordance with the factors listed in Policy ¶ 4(c) before making any such assumptions. 

 

Complainant alleges that Respondent is not commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the disputed domain name as “MSOB c/o Jeff.”  The abbreviation “MSOB” appears to stand for “Morgan Stanley Offshore Bank.”  However, without more the Panel is required to find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).

 

Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Respondent’s disputed domain name resolves to website prominently displaying Complainant’s MORGAN STANLEY mark in a format similar to Complainant’s own website.  Ostensibly, the goal for this website is to convince Internet users that this site is legitimately offered by Complainant for its customers.  Complainant argues that Respondent is engaging in phishing which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Internet users that arrive at Respondent’s website are asked to open an account.  To do so, they must provide both personal and financial information.  Respondent presumably collects this information to be used for its own nefarious end.  Therefore, the Panel finds that Respondent is phishing with the disputed domain name and that phishing does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant bears the burden of proving bad faith registration and use under Policy ¶ 4(a)(iii).  Policy ¶ 4(b) provides examples of ways in which Complainant may do so, but they are not an exhaustive or exclusive list of potential ways to prove bad faith.  Instead, Complainant may utilize the totality of the circumstances to demonstrate bad faith registration and use by Respondent.  If the facts bear that out, the Panel will not merely focus on circumstances that fit discretely within the Policy ¶ 4(b) categories, but will focus on the conduct and facts surrounding Respondents particular use of the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).  

 

Complainant contends that Respondent is attempting to pass itself off as Complainant and then defraud Internet users by collecting personal and financial information with a phishing scheme.  Respondent’s <morganstanleyoffshore.com> domain name resolves to a website which prominently displays Complainant’s MORGAN STANLEY mark.  Respondent’s website invites Internet users to open an account with “Morgan Stanley Offshore Bank.”  To open the account, Internet users must provide Respondent with personal and financial information.  Respondent is trying to confuse Internet users into believing that its website is truly offered by Complainant as an offshore banking service provider to obtain personal and financial information.  The Panel finds that Respondent is attempting to pass itself off as Complainant with the hope that it will further the phishing scheme it has set up at the website to which the disputed domain name resolves.  Thus, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers….  The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).

 

The Panel finds that Complainant has established 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 <morganstanleyoffshore.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  January 18, 2012

 

 

 

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