Morgan Stanley v. Taylor Lim
Claim Number: FA2307002054036
Complainant is Morgan Stanley ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Taylor Lim ("Respondent"), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msfinance.online> and <msfinance.site>, 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 Forum electronically on July 20, 2023; Forum received payment on July 20, 2023.
On July 20, 2023, NameSilo, LLC confirmed by email to Forum that the <msfinance.online> and <msfinance.site> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 July 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@msfinance.online, postmaster@msfinance.site. Also on July 21, 2023, 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 registrations as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. 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. Afnan Aslam Aslam, FA 1986984 (Forum Apr. 4, 2022) (finding that Complainant has rights in MS for purposes of the Policy); Morgan Stanley v. Tommy Shelby, FA 1873937 (Forum Dec. 30, 2019) (same).
The disputed domain names <msfinance.online> and <msfinance.site> were registered in June 2023. The names are registered in the name of a privacy registration service on behalf of Respondent. The domain names are being used for identical websites that purport to offer cryptocurrency trading and investment services. Complainant states that Respondent is not commonly known by the disputed domain names, is not a licensee of Complainant, and is not authorized to use Complainant's marks.
Complainant contends on the above grounds that each of the disputed domain names <msfinance.online> and <msfinance.site> is confusingly similar to its MORGAN STANLEY and MS marks; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are 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").
The Panel finds that Complainant has rights in the MS initialism for purposes of paragraph 4(a)(i) of the Policy, for the reasons set forth in Morgan Stanley v. 张 大大, FA 1974405 (Forum Dec. 21, 2021); Morgan Stanley v. Eric Masoko, FA 1945048 (Forum June 10, 2021); Morgan Stanley v. Stacey Wilson / hsbc, FA 1938103 (Forum Apr. 23, 2021); and Morgan Stanley v. Tommy Shelby, supra.
Each of the disputed domain names <msfinance.online> and <msfinance.site> incorporates the MS mark, adding the generic term "finance" (which relates to Complainant's business) and the ".online" or ".site" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Morgan Stanley v. Afnan Aslam Aslam, supra (finding <msfinances.com> confusingly similar to MS); Morgan Stanley v. Eric Masoko, supra (finding <msfinanceonline.com> confusingly similar to MS); Morgan Stanley v. Ali Dubai, FA 1666081 (Forum Apr. 18, 2016) (finding <morganstanley.site> confusingly similar to MORGAN STANLEY); Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2014) (finding <morganstanley.online> identical to MORGAN STANLEY). See also Morgan Stanley v. Ismail Sokhna, Talibe Sokhna, DIO2020-0015 (WIPO Dec. 29, 2020) (finding <msfinance.io> confusingly similar to MORGAN STANLEY under .IO Domain Name Dispute Resolution Policy). The Panel considers each of the disputed domain names 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 names, 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).
Each of the disputed domain names incorporates Complainant's registered mark without authorization, and they are being used for websites that promote related or competing services, without any obvious disclaimer or other clear indication that the websites are not affiliated with Complainant. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Morgan Stanley v. Afnan Aslam Aslam, supra (finding lack of rights or interests in similar circumstances); Morgan Stanley v. Zhang Zhuo, FA 1976428 (Forum Jan. 27, 2022) (same). See also Morgan Stanley v. Ismail Sokhna, Talibe Sokhna, supra (finding lack of rights or interests in similar circumstances under .IO Domain Name Dispute Resolution Policy).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any 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 names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a 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 used a privacy registration service to register two domain names combining Complainant's well-known initialism with a generic term related to Complainant's business, and is using them for websites that promote related or competing services, without any obvious disclaimer or other clear indication that the websites are not affiliated with Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Morgan Stanley v. Afnan Aslam Aslam, supra (finding bad faith registration and use in similar circumstances); Morgan Stanley v. Zhang Zhuo, supra (same). In addition, Respondent has failed to come forward with any explanation for the selection or intended use of the domain names. In the Panel's view, this lends further support to the inference that Respondent intended to create the appearance of a connection to Complainant and to exploit that confusion for commercial gain. The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msfinance.online> and <msfinance.site> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 11, 2023
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