Morgan Stanley v. Fredrick Palmer / Anonymize, Inc.
Claim Number: FA2108001957836
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Fredrick Palmer / Anonymize, Inc. (“Respondent’), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com> and <retailclientservicesms-au.com>, registered with 1Api Gmbh; Epik Inc., Epik Holdings 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 August 2, 2021. The Forum received payment on August 2, 2021.
On August 3, 2021, 1Api Gmbh; Epik Inc., Epik Holdings Inc confirmed by e-mail to the Forum that the <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com> and <retailclientservicesms-au.com> domain names are registered with 1Api Gmbh; Epik Inc., Epik Holdings Inc and that Respondent is the current registrant of the names. 1Api Gmbh; Epik Inc., Epik Holdings Inc has verified that Respondent is bound by the 1Api Gmbh; Epik Inc., Epik Holdings 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 August 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@amlservices-msuk.com, postmaster@msretailenquiry.com, postmaster@ms-client-au.com, postmaster@retailclientservicesms-au.com. Also on August 11, 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 September 1, 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 Respondent 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 amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com> and <retailclientservicesms-au.com> domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. They were registered within within a short time frame of each other and they use the same hosting ISP in Ukraine. Each contains the same term “ms,” and other generic or descriptive words in different orders. Complainant submits that each of the domain names likely has been or will be used as part of an investment scam impersonating Complainant, since they are the latest “ms” formative domain names registered by the same Respondent in connection with a common investment scam.
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 Fredrick Palmer / Anonymize, Inc. as “Respondent”.
A. Complainant
Complainant offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) . Respondent’s <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com>, and <retailclientservicesms-au.com> domain names are confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com>, and <retailclientservicesms-au.com> domain names as Respondent is not commonly known by the domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the domain names and is likely to use them to impersonate Complainant to scam Internet users, as Respondent has done in the past.
Finally, Respondent registered the <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com>, and <retailclientservicesms-au.com> domain names in bad faith with actual knowledge of Complainant’s mark and its “MS” acronym. Respondent has an established pattern of bad faith. Respondent is presently passively holding the domain names. Any active use likely to cause confusion among internet users and there is no conceivable way for Respondent to use the domain names without infringement of Complainant’s mark.
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 its registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). The Panel finds Respondent’s <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com> and <retailclientservicesms-au.com> domain names to be confusingly similar to Complainant’s mark as each domain name contains the well-known “MS” abbreviation of Complainant’s mark, with generic, descriptive or geographic terms and hyphens, none of which are sufficient to distinguish the domain names from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(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.
The <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com>, and <retailclientservicesms-au.com> domain names were registered on July 17, 2021, July 15, 2021, August 1, 2021 and August 5, 2021, respectively, long after Complainant has shown that its MORGAN STANLEY mark had become famous and its “MS” acronym very well known. The domain names do not resolve to active websites. However, Complainant has shown that similarly constructed domain names have been found by numerous other Panels in UDRP proceedings to have been used in bad faith to impersonate Complainant in fraudulent attempts to scam consumers.
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.
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
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 its MS abbreviation.
Although the <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com> and <retailclientservicesms-au.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 and as this Panel found in Morgan Stanley v. Henry Freeman / Anonymize, Inc. / Ellis E Warner, FA1943140 (Forum June 1, 2021), 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.
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 <amlservices-msuk.com>, <msretailenquiry.com>, <ms-client-au.com> and <retailclientservicesms-au.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: September 17, 2021
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