Morgan Stanley v. Eric Masoko
Claim Number: FA2105001943675
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Eric Masoko (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleygroups.com>, registered with NameSilo, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2021; the Forum received payment on May 1, 2021.
On May 3, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <morganstanleygroups.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 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 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@morganstanleygroups.com. Also on May 3, 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 June 1, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the disputed domain name, which incorporates Complainant’s MORGAN STANLEY mark in whole, must be deemed virtually identical or confusingly similar to Complainant’s registered mark. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
Complainant further contends that the addition of the descriptive or generic term “groups” does not obviate the confusing similarity. See Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC, FA 1246046 (Forum Mar. 24, 2009) (addition of generic words “bank” and “online” in domain MORGANSTANLEYBANKONLINE to complainant’s MORGAN STANLEY mark did not obviate confusion). It is further contended by Complainant that addition of the generic Top Level Domain (“gTLD”) extension <.com> and elimination of spaces also fail to obviate the confusing similarity. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name).
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that upon information and belief, neither “MORGAN STANLEY” nor the disputed domain name form part of Respondent’s name. Additionally, upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY mark, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Respondent was not commonly known by that name. See Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name).
Complainant asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY mark or the disputed domain name. Indeed, Respondent has no relationship whatsoever with Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Referring to a screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, Complainant alleges that the disputed domain name resolves to a website for a purported company called “Morgan Stanley Bank” that seeks to impersonate Complainant and offer fake financial services. Complainant argues that such fraudulent use of a domain name to impersonate and create a false connection with Complainant for purposes of phishing is not a legitimate use of the domain name or bona fide offering of goods and services. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”).
Complainant adds that even without the evidence of impersonation, the use of the disputed 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 confusing similar to Complainant’s marks is not a legitimate or bona fide use of a domain name. See FC Online Marketing, Inc. v. Brett Ray, FA 1643100 (Forum Nov. 19, 2015) (use of confusingly similar domain name “to market, for commercial gain, services similar to those of Complainant,” was not bona fide or legitimate use).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith arguing that it is clearly more than coincidence that the registrant chose and registered the disputed domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant has a long and well-established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he or she chose and registered the disputed domain name, and in fact chose the domain name because it is confusingly similar to Complainant’s well-known marks and Respondent intended to capitalize on that confusion. This alone constitutes evidence of bad faith registration of the disputed domain name. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM).
Complainant further submits that by using the disputed domain name to impersonate Complainant in connection with phishing, Respondent seeks to falsely suggests that it is somehow endorsed by, or affiliated with, Complainant. Such false association, passing off and phishing in violation of Complainant’s intellectual property rights is further evidence of bad faith use and registration. See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”).
Additionally Complainant argues that even without evidence of impersonation, the use of the disputed domain name in connection with Respondent’s purported offering of services that are closely related to those services offered by Complainant under a name and mark that is confusing similar to Complainant’s marks is not a legitimate or bona fide use of a domain name and by causing initial interest confusion among Internet users, it is disrupting the business of Complainant. See FC Online Marketing, Inc. v. Brett Ray, FA 1643100 (Forum Nov. 19, 2015) (use of confusingly similar domain name “to market, for commercial gain, services similar to those of Complainant,” was not bona fide or legitimate use); Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on the business of financial, investment, and wealth management services in which it uses the MORGAN STANLEY mark and is the owner of a portfolio of trademark registrations including the following:
· United States registered service mark MORGAN STANLEY, registration number 1,707,196, registered on the Principal Register on August 11, 1992 for services in international class 36;
· United States registered trademark MORGAN STANLEY, registration number 4,470,389, registered on the Principal Register on January 21, 2014 for goods in international classes 9 and 16.
Complainant has an established Internet presence and maintains a website for its financial services business to which its domain name <morganstanley.com> resolves.
The disputed domain name was registered on April 2, 2021 and resolves to a website that purports to offer banking and financial services.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
Respondent is the registrant of the disputed domain name. Respondent availed of a privacy service to conceal his name on the published WhoIs and the identity of the registrant was disclosed by the Registrar to the Forum in the course of this proceeding.
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 made out an uncontested prima facie case that it has rights in the MORGAN STANLEY mark established by its ownership of the trademark and service mark registrations described above. In addition the uncontested evidence shows that Complainant has established rights and goodwill in the mark through its use in its financial, investment, and wealth management services. It has an established Internet presence, with approximately 1,000 offices in over 40 countries, over 55,000 employees worldwide, and net revenues of over US$ 40,000,000,000 in 2018.
The disputed domain name <morganstanleygroups.com> consists of Complainant’s distinctive registered trademark and service mark in its entirety in combination with the elements “groups” and the generic Top Level Domain (“gTLD”) <.com> extension.
Complainant’s MORGAN STANLEY mark is the initial, dominant and only distinctive element in the disputed domain name. The word “groups” is generic lacking any distinguishing character in context and for the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD <.com> extension may be ignored, because in the circumstances of this Complaint, on the balance of probabilities, it would be considered a technical necessity for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the MORGAN STANLEY mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because:
· upon information and belief, neither the name or mark MORGAN STANLEY nor the disputed domain name itself forms part of Respondent’s name;
· also upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY mark, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Respondent was not commonly known by that name;
· Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN mark or the disputed domain name;
· Respondent has no relationship whatsoever with Complainant;
· the screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, shows that the disputed domain name resolves to a website for a purported company called “Morgan Stanley Bank” that seeks to impersonate Complainant and offer fake financial services;
· such fraudulent use of a domain name to impersonate and create a false connection with Complainant for purposes of phishing is not a legitimate use of the domain name or bona fide offering of goods and services; and
· in any event, the use of the disputed 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 confusing similar to Complainant’s marks is not a legitimate or bona fide use of a domain name.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith because it is most improbable that the registrant was unaware of Complainant, its name, mark, goodwill and reputation when the disputed domain name was chosen and registered.
It follows therefore that the registrant, intentionally registered a domain name that is confusingly similar to Complainant’s MORGAN STANLEY mark with its long and well-established reputation. This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered because of its confusing similarity to Complainant’s well-known mark and the registrant intended to take predatory advantage of such confusion.
The screenshot of the website to which the disputed domain name resolves shows that Respondent is using to impersonate Complainant, while purporting to offer banking services. The website purports to be hosted by an entity called “Morgan Stanley Bank”. There is nothing on Respondent’s website that indicates that it is not Complainant or associated with Complainant. The address and content of Respondent’s website is clearly intended to mislead and confuse Internet users while purporting to offer banking services by implying that the disputed domain name and Respondent’s website are somehow endorsed by or affiliated with Complainant.
This Panel finds therefore that the disputed domain name is being used in bad faith.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleygroups.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 2, 2021
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