DECISION

 

Morgan Stanley v. Paramjeet Kaur

Claim Number: FA2310002065249

 

PARTIES

Complainant is Morgan Stanley ("Complainant"), USA, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Paramjeet Kaur ("Respondent"), Maryland, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <morqanstanleywealth.com>, registered with NameCheap, Inc..

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 6, 2023; Forum received payment on October 6, 2023.

 

On October 6, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <morqanstanleywealth.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@morqanstanleywealth.com. Also on October 9, 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 October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, Morgan Stanley, offers various financial services. Complainant has rights in the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., reg. no. 1,707,196, registered August 11, 1992). The disputed domain name is confusingly similar to Complainant's mark because it contains the MORGAN STANLEY mark with a slight misspelling, replacing the "g" with "q," and merely adding the descriptive term "wealth" and the generic top-level domain name ("gTLD") ".com" to form the disputed domain name.

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant's MORGAN STANLEY mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain name to impersonate and create a false connection with Complainant, ostensibly in an attempt to phish for personal information and defraud consumers.

 

iii) Respondent registered and uses the disputed domain name in bad faith. By causing initial interest confusion, Respondent's use and registration of the disputed domain name disrupt the business of Complainant. Respondent uses the disputed domain name to impersonate Complainant, ostensibly in connection with phishing. The misspelling of Complainant's mark indicates typosquatting and bad faith. Respondent was aware of Complainant's MORGAN STANLEY mark when he or she chose and registered the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on September 19, 2023.

 

2. Complainant has established rights in the MORGAN STANLEY mark based upon registration with the USPTO (e.g., reg. no. 1,707,196, registered August 11, 1992). 

 

3. The disputed domain name has been used without authorization to send phishing emails impersonating Complainant and its financial advisor in an attempt to scam unsuspecting investors into thinking that they are dealing with Complainant and/or its financial advisor, including wire transfers, in connection with a fraud.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the MORGAN STANLEY mark based upon registration with the USPTO (e.g., reg. no. 1,707,196, registered August 11, 1992). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i).  Since Complainant has provided evidence of registration of the MORGAN STANLEY mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name <morqanstanleywealth.com> is confusingly similar to Complainant's mark because it contains the MORGAN STANLEY mark with a slight misspelling, replacing the "g" with "q," and merely adding a generic term "wealth" and the gTLD ".com" to form the disputed domain name. The addition of generic or descriptive terms and gTLDs to a mark does not distinguish the disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i).

 

The Panel finds that a misspelling of Complainant's MORGAN STANLEY mark (replacing the "g" with "q") does not obviate the confusing similarity between the disputed domain name and Complainant's marks. See Morgan Stanley v. Andrew Pet / Murry Law Morgan, FA 2208002006833 (Forum Aug. 29, 2022 (substitution of the letter 'g' with the letter 'q' from complainant's MORGAN STANLEY mark did not obviate confusion from domain name MORQANSTANLEY.CAM). Here the misspelling has the same phonetic sound as Complainant's mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's MORGAN STANLEY mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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").

 

Complainant claims Respondent does not have rights or legitimate interests in the disputed domain name as Respondent is not licensed or authorized to use Complainant's MORGAN STANLEY mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (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 unmasked WHOIS information for the disputed domain name lists the registrant as "Paramjeet Kaur." Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant also argues Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent uses the disputed domain name to impersonate Complainant and its financial advisor in an attempt to scam unsuspecting investors into thinking that they are dealing with Complainant and/or its financial advisor, ostensibly in an attempt by Respondent to obtain personal and/or account information from unsuspecting investors, including wire transfers, in connection with a fraud. Complainant provides an email copy, which was sent from the email address formulating by the disputed domain name and the real name of Complainant's financial advisor, containing license information, linking to his authorized page on Complainant's website, and listing an address for one of Complainant's offices, all without authorization of Complainant and its financial advisor.

 

The Panel finds that such a fraudulent use of the disputed domain name to impersonate and create a false connection with Complainant, ostensibly in an attempt to phish for personal information and defraud consumers does not make a legitimate use of the domain name or bona fide offering of goods and services. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) ("In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant's mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name"); see also Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (respondent's use of disputed domain name to phish for personal information of Internet users was not bona fide offering of goods or services or legitimate noncommercial or fair use of disputed domain name pursuant to Policy).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the disputed domain name in bad faith as Respondent registered and uses the disputed domain name to impersonate and create a false connection with Complainant. As noted above, Respondent attempted to impersonate Complainant and its financial advisor in an attempt to scam unsuspecting investors into thinking that they are dealing with Complainant and/or its financial advisor, ostensibly in an attempt by Respondent to obtain personal and/or account information from unsuspecting investors, including wire transfers, in connection with a fraud. The Panel finds that such false association, passing off and phishing in violation of Complainant's intellectual property rights constitute bad faith use and registration. See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) ("Respondent's use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)"); see also Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because respondent used domain name to phish for personal information from Internet users).

 

Complainant further contends Respondent registered the disputed domain name in bad faith as Respondent was aware of Complainant's MORGAN STANLEY mark when he or she chose and registered the disputed domain name. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant's rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). The Panel notes that with offices in over 40 countries, and over 80,000 employees worldwide, Complainant offers global access to financial markets and advice. Complainant has used marks containing or comprising MORGAN STANLEY in connection with various financial and related services since at least as early as 1935, and the marks remain in wide-spread use today worldwide. In 2020, Complainant had net revenues of over US$ 48,000,000,000. Complainant has ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for at least the past five years, and was ranked numbers 33 and 34, respectively, in Brand Finances 2019 and 2020 Banking 500 global brands. As such, Complainant's mark is considered as being a well-known and reputable trademark. The Panel infers, due to the notoriety of Complainant's mark and Respondent's manner of use of the disputed domain name that Respondent registered the disputed domain name with knowledge of Complainant's rights in MORGAN STANLEY mark, which constitutes bad faith registration per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <morqanstanleywealth.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: October 31, 2023