Morgan Stanley v. Eric Masoko
Claim Number: FA2105001945048
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 <msfinanceonline.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2021; the Forum received payment on May 14, 2021.
On May 14, 2021, NameSilo, LLC confirmed by email to the Forum that the <msfinanceonline.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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com. Also on May 17, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant is a global financial, investment, and wealth management services company with more than 1,000 offices in over 40 countries, and over 55,000 employees worldwide. Complainant has used MORGAN STANLEY and related marks in connection with this business since at least as early as 1935. Complainant's MORGAN STANLEY mark is registered in countries around the world, including the United States. Complainant asserts that the MORGAN STANLEY mark is famous and has become well known to consumers globally as a result of its extensive use and promotion.
Complainant also claims trademark rights in the initialism MS in the financial services field. In support of this claim, Complainant states (inter alia) that MS has been used for decades both by it and by the public as a shortened form of the MORGAN STANLEY mark; that Complainant's stock has traded on the New York Stock Exchange under the ticker symbol "MS" for more than 25 years; and that panels have found Complainant to have the requisite rights in MS in several prior proceedings under the Policy. See, e.g., Morgan Stanley v. Tommy Shelby, FA 1873937 (Forum Dec. 30, 2019) (finding that Complainant has rights in MS for purposes of the Policy); Morgan Stanley v. Liam Murphy / Murphy IT Services, FA 1832448 (Forum Apr. 8, 2019) (same).
Respondent registered the disputed domain name <msfinanceonline.com> in May 2021. The domain name is being used for a website for what purports to be a company called "Morgan Stanley Bank." The website offers or purports to offer loans, credit cards, and other financial services. Complainant asserts that the website also engages in phishing by asking users to enter login and account information. Complainant states that Respondent is not commonly known by the disputed domain name, is not a licensee of Complainant, and has never been authorized by Complainant to use its marks or the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <msfinanceonline.com> is confusingly similar to its MORGAN STANLEY and MS marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant asserts rights in MS, an initialism for its registered MORGAN STANLEY mark. Although a trademark registration is not required to prevail under the Policy, a complainant's burden is fairly steep if its claimed rights arise solely at common law. The claimed mark must have been used as to identify the source of goods or services, and as a result of such use, must have become distinctive of that source.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. . . .
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3.
Complainant asserts that it is commonly known by and referred to as MS, and has presented ample evidence in support of that claim (and Respondent has not come forward to challenge it). Accordingly, the Panel finds that Complainant has the requisite rights in MS for purposes of the Policy. See Morgan Stanley v. Stacey Wilson / hsbc, FA 1938103 (Forum Apr. 23, 2021) (finding such rights in similar circumstances).
The disputed domain name <msfinanceonline.com> incorporates the MS mark, adding the generic terms "finance" and "online" and the ".com" top-level domain, contributing to the confusing similarity between the disputed domain name and Complainant's mark. See, e.g., id. (finding <msfundserv1ces.com> confusingly similar to MS); Morgan Stanley v. Liam Murphy / Murphy IT Services, supra (finding <msinvestmentbanking.com> confusingly similar to MS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's well-known initialism without authorization, combining it with generic terms related to Complainant's industry, and it is being used to pass off as Complainant and promote competing services. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Morgan Stanley v. Micheal Ard, FA 1747231 (Forum Sept. 27, 2017) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's unauthorized registration of a domain name incorporating Complainant's well-known initialism, together with the use of the domain name to generate revenues by creating confusion with Complainant, promoting directly competing services, and likely phishing for users' personal information, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Morgan Stanley v. Micheal Ard, supra (finding bad faith registration and use in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msfinanceonline.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 10, 2021
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