Morgan Stanley v. QiuMing Xu
Claim Number: FA2303002034269
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is QiuMing Xu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msfund.app>, (‘the Domain Name’) registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on March 2, 2023; Forum received payment on March 2, 2023.
On March 2, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <msfund.app> 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 March 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2023 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@msfund.app. Also on March 6, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
A. Complainant
The Complainant’s contentions can be summarized as follows:
Complainant is the owner of the well-known mark MORGAN STANLEY registered in, inter alia, the USA for financial services with first use recorded as 1935.
The Domain Name registered in 2023 is confusingly similar to the Complainant’s MS mark (registered in 2022 in the EU for financial services and used for over 25 years) adding the generic word ‘fund’ and the gTLD ‘.app’ neither of which prevent confusing similarity between the Domain Name and the Complainant’s MS mark.
Complainant owns numerous domain names worldwide containing or comprising “MSFUND” or “MSFUNDS,” including msfund.cn, msfund.com, msfund.com.cn, msfunds.cn, msfunds.com, and msfunds.com.cn.
The Respondent is not commonly known by the Domain Name and has not been authorized by the Complainant to use its mark. The Domain Name resolves to a website using the Complainant’s MORGAN STANLEY mark as a masthead and featuring a log in screen for phishing purposes. The use of the Domain Name for phishing impersonating the Complainant is not a legitimate or bona fide use of a domain name. The Respondent has no rights or legitimate interests in the Domain Name which is registration and use in opportunistic bad faith with actual knowledge of the rights of the Complainant, deceiving Internet users for phishing purposes and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the well-known marks MORGAN STANLEY and MS registered in, inter alia, the USA for financial services with first use of MORGAN STANLEY recorded as 1935. Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” and the Complainant has been the owner of the domain name ms.com for over 25 years. MS.com resolves to Complainant’s primary website at www.morganstanley.com. Complainant owns numerous domain names worldwide containing or comprising “MSFUND” or “MSFUNDS,” including msfund.cn, msfund.com, msfund.com.cn, msfunds.cn, msfunds.com, and msfunds.com.cn.
The Domain Name registered in 2023 resolves to a website using the Complainant’s MORGAN STANLEY mark as a masthead and featuring a log in screen.
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”).
The Domain Name registered in 2023 consists of the Complainant’s mark MS, (registered in 2022 in the EU for financial services and used for over 25 years), the generic word ‘fund’ and the gTLD ‘.app’.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘fund’ to the Complainant's MS mark does not distinguish the Domain Name from the Complainant's MS trade mark pursuant to the Policy.
The gTLD ‘.app’ does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s MS mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial and so cannot be legitimate noncommercial fair use.
The web site to which the Domain Name is attached uses the Complainant’s MORGAN STANLEY mark as a masthead and the Domain Name is very similar to an official site of the Complainant msfund.com. The Panel finds this use is deceptive. The purpose of the site attached to the Domain Name featuring a log in screen and impersonating an official site of the Complainant appears to be phishing which cannot be a bona fide offering of goods and services or a legitimate noncommercial fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (finding that ‘Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use’).
The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Phishing is disruptive, deceptive and evidence of bad faith registration and use within the Policy 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msfund.app> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 3, 2023
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