Morgan Stanley v. Daniel Killahan
Claim Number: FA2205001995248
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Daniel Killahan (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mswealthmanagement-au.com> and <mswealthmanagement-aus.com>, registered with NICENIC INTERNATIONAL GROUP CO., LIMITED.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2022; the Forum received payment on May 6, 2022.
On May 10, 2022, NICENIC INTERNATIONAL GROUP CO., LIMITED confirmed by e-mail to the Forum that the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names are registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and that Respondent is the current registrant of the names. NICENIC INTERNATIONAL GROUP CO., LIMITED has verified that Respondent is bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED 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 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2022 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@mswealthmanagement-au.com, postmaster@mswealthmanagement-aus.com. Also on May 10, 2022, 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 6, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
A. Complainant
Complainant operates in the investment banking and financial services industry. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) Reg. No. 1,707,196, registered Aug. 11, 1992. Respondent’s <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY mark as they incorporate the mark by using its abbreviation (“ms”) and adding the descriptive terms “wealth management” and “au” or “aus” (short for “Australia”), along with a hyphen, removal of a space, and addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain names and creates confusion as to the source and affiliation of the website.
Respondent registered and uses the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names in bad faith. Respondent attempts to capitalize on the confusing similarity and take advantage of Complainant’s goodwill. Respondent also fails to make active use of the disputed domain names. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant provides two additional submission screenshots which show Respondent passing off as Complainant in emails. Pursuant to Forum Supplemental Rule 7, these submissions are accepted and considered by the Panel.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names.
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 claims rights in the MORGAN STANLEY mark through its registration with the USPTO Reg. No. 1,707,196, registered Aug. 11, 1992. Registration with the USPTO is generally sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the mark it incorporates where it uses an abbreviation of the mark, adds a hyphen, adds a descriptive terms, and adds the “.com” gTLD. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). The disputed domain names incorporate the mark by using its abbreviation (“ms”) and adding the descriptive terms “wealthmanagement” and “au” or “aus” (short for “Australia”), along with a hyphen, removal of a space, and addition of the “.com” generic top-level domain (“gTLD”). Furthermore, Complainant has rights in several domain names using the “ms” abbreviation. The Panel finds that Respondent’s domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, and a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information identifies Respondent as “Daniel Killahan,” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain names resolving websites, which feature no content and an error message. This is evidence that Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent is not using the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by passing off as Complainant in emails. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to confuse users as to affiliation with a mark, while taking advantage of the goodwill of a mark in phishing emails, does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant’s additional submissions show emails from the disputed domain name passing off as Complainant. The Panel finds that Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant argues that Respondent registered and uses the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names in bad faith by passing off as Complainant in emails. Under Policy ¶ 4(b)(iv), appropriating complainant’s mark for purposes of passing off as Complainant in phishing emails is generally demonstrative of bad faith registration and use. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant has provided screenshots of emails that show Respondent passing off as Complainant. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names with bad faith actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant’s MORGAN STANLEY mark is incorporated into the disputed domain names with the abbreviations “ms”. This is evidence that Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names in bad faith by inactively holding the disputed domain names’ resolving websites. Under Policy ¶ 4(a)(iii), inactively holding the disputed domain name’s resolving website is evidence of bad faith registration and use. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant has provided screenshots of the disputed domain names resolving websites, which feature no content but an error message. This is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names in opportunistic bad faith given that Complainant’s mark is well-known. Under Policy ¶ 4(a)(iii), respondent’s registration and use of a disputed domain name may be in opportunistic bad faith given the distinctive fame of Complainant’s mark. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). Complainant’s MORGAN STANLEY mark is incorporated into the disputed domain name with the abbreviations “ms” along with the related term “wealthmanagement”. Based on the fame of Complainant’s mark and the use made of the domain names, the Panel finds that Respondent registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved 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 <mswealthmanagement-au.com> and <mswealthmanagement-aus.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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