Morgan Stanley v. Henry Freeman / Anonymize, Inc. / Ellis E Warner
Claim Number: FA2104001943140
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondents are Henry Freeman / Anonymize, Inc. / Ellis E Warner (“Respondents”), GB and USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ms-clientservices.com>, <ms-aml.com>, <ms-private.com>, and <ms-clientservice.com> (“the Domain Names”), registered with 1Api Gmbh; Pdr Ltd. D/B/A Publicdomainregistry.Com and Epik Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2021. The Forum received payment on April 28, 2021.
On April 29, 2021, 1Api Gmbh; Pdr Ltd. D/B/A Publicdomainregistry.Com and Epik Inc. confirmed by e-mail to the Forum that the <ms-clientservices.com>, <ms-aml.com>, <ms-private.com>, and <ms-clientservice.com> domain names are registered with 1Api Gmbh; Pdr Ltd. D/B/A Publicdomainregistry.Com and Epik Inc. and that Respondents are the current registrants of the names. 1Api Gmbh; Pdr Ltd. D/B/A Publicdomainregistry.Com and Epik Inc. have verified that Respondents are bound by the 1Api Gmbh; Pdr Ltd. D/B/A Publicdomainregistry.Com and Epik Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@ms-clientservices.com, postmaster@ms-aml.com, postmaster@ms-private.com, postmaster@ms-clientservice.com. Also on May 3, 2021, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of 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”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases. The <ms-clientservices.com> and <ms-aml.com> domain names were registered by the same registrant – “Henry Freeman” – with the same street address and the same email address. The registrar of <ms-private.com> domain name has not revealed the identity of the actual owner of that domain name, instead still listing the proxy service Anonymize, Inc. However, that domain name was registered on the same date, set to the same ISP and mail servers and resolved to same website as the <ms-clientservices.com> and <ms-aml.com> domain names. Additionally, the <ms-clientservice.com> domain name is nearly identical to the <ms-clientservices.com> domain name; was registered within a week of the other three domain names and was registered using the same registrar as the <ms-clientservices.com> domain name. Finally, all of the Domain Names also use the same format: they begin with “MS,” the well-known initialism for Complainant’s MORGAN STANLEY marks, and are followed by a hyphen and a term related to Complainant or its business.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the Domain Names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Henry Freeman / Anonymize, Inc. / Ellis E Warner as “Respondent”.
A. Complainant
Complainant 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. Complainant has rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”). The Domain Names are confusingly similar to Complainant’s MORGAN STANLEY mark.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by either MORGAN STANLEY, MS or the Domain Names and does not engage in any business or commerce under any of those names. Complainant has never authorized Respondent to use the MORGAN STANLEY mark, MS, or the Domain Names. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent fails to make active use of them, save that Respondent uses the <ms-aml.com> and <ms-private.com> domain names to pass itself off as Complainant in a financial scheme.
Respondent registered and uses the Domain Names in bad faith. Respondent uses the <ms-aml.com> and <ms-private.com> domain names to pass itself off as Complainant in a financial scheme and otherwise fails to make active use of the Domain Names. Furthermore, given Complainant’s trademark registrations and the famous nature of Complainant’s mark, Respondent had constructive and actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the MORGAN STANLEY mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). The Panel finds each of Respondent’s <ms-clientservices.com>, <ms-aml.com>, <ms-private.com> and <ms-clientservice.com> domain names to be confusingly similar to Complainant’s MORGAN STANLEY mark as they merely use the common abbreviation of Complainant’s mark, “MS,” while adding descriptive terms and hyphens, which do nothing to distinguish the Domain Names from Complainant’s mark, and the inconsequential generic top-level domain “.com”, which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant has shown that its MORGAN STANLEY mark and its MS abbreviation had become famous many years before the Domain Names were registered. The <ms-clientservices.com>, <ms-aml.com> and <ms-private.com> domain names were registered on April 11, 2021. The <ms-clientservice.com> domain name was registered on April 26, 2021. None resolve to an active website.
Complainant says the <ms-private.com> and <ms-aml.com> domain names have been used by Respondent to impersonate Complainant in an attempt to scam consumers with fake investments. Two third parties informed Complainant that they had been contacted from an alleged employee of Complainant after they inquired via an online website about investment bond opportunities. The purported employee sent them emails using email addresses incorporating the <ms-private.com> and <ms-aml.com> domain names offering a purported bond investment opportunity from Complainant. Such fraudulent use of a domain name to impersonate and create a false connection with Complainant is not a legitimate use of the domain name or bona fide offering of goods and services.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances set out in relation to the second element satisfy the Panel that Respondent registered the Domain Names in bad faith while fully aware of Complainant’s famous MORGAN STANLEY mark and MS abbreviation.
Respondent is using the <ms-private.com> and <ms-aml.com> domain names to impersonate Complainant in a fraudulent attempt to scam consumers with fake investments. Although the <ms-clientservices.com and <ms-clientservice.com> domain names do not resolve to an active website, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no conceivable active use that could be made of those domain names that would not amount to an infringement of Complainant’s rights. Accordingly, the Panel finds that Respondent’s passive use of those domain names constitutes use in bad faith.
Complainant has established this element.
DECISION
Complainant 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-clientservices.com>, <ms-aml.com>, <ms-private.com>, and <ms-clientservice.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 1, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page