DECISION

 

Morgan Stanley v. Kyson Ale

Claim Number: FA2403002088961

 

PARTIES

Complainant is Morgan Stanley ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Kyson Ale ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <morgan--stanley.com>, registered with Gname.com Pte. Ltd.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 18, 2024; Forum received payment on March 18, 2024.

 

On March 19, 2024, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <morgan--stanley.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2024 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@morgan--stanley.com. Also on March 19, 2024, 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 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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

Complainant contends as follows:

 

Complainant Morgan Stanley offers financial, investment, and wealth management services under the MORGAN STANLEY name.

 

Complainant asserts rights in MORGAN STANLEY based upon its registration with the United States Patent and Trademark Office ("USPTO").

 

Respondent's <morgan--stanley.com> domain name is confusingly similar to Complainant's mark as it contains the MORGAN STANLEY mark in whole. The addition of the top-level and hyphens, and elimination of a space fail to obviate the confusing similarity.

 

Respondent does not have rights or legitimate interests in the <morgan--stanley.com> domain name. Respondent is not licensed or authorized to use Complainant's MORGAN STANLEY mark and is not commonly known by the at-issue domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the at-issue domain name addressed a website that impersonated Complainant by displaying the MORGAN STANLEY marks, including Complainant's logo, in connection with offering purported financial services.

 

Respondent registered and uses the <morgan--stanley.com> domain name in bad faith. Respondent was aware of Complainant's well-known MORGAN STANLEY mark when Respondent registered and used the domain name to pass itself off as Complainant and purported to offer financial services. Such false association, passing off and phishing in violation of Complainant's intellectual property rights is further evidence of bad faith use and registration. Respondent seeks to falsely suggest it is endorsed by or affiliated with Complainant. Furthermore, Respondent's use the domain name creates initial interest confusion. Respondent registered and uses the at-issue domain name with constructive and/or actual knowledge of Complainant's rights in the MORGAN STANLEY mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the MORGAN STANLEY mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the MORGAN STANLEY trademark.

 

Respondent uses the <morgan--stanley.com> domain name to address a website displaying the MORGAN STANLEY mark that appears to offer financial services.

 

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

The at-issue domain name is confusingly similar to a mark in which Complainant has rights.

 

Complainant's USPTO trademark registration (or registrations) for MORGAN STANLEY demonstrates Complainant's rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <morgan--stanley.com> domain name is confusingly similar to Complainant's MORGAN STANLEY mark. Respondent's domain name consists of Complainant's trademark with its domain name impermissible space replace by two hyphens and with all followed by the ".com" top-level. The differences between the at-issue <morgan--stanley.com> domain name and Complainant's MORGAN STANLEY trademark are insufficient to distinguish the domain name from Complainant's mark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent's <morgan--stanley.com> domain name is confusingly similar to MORGAN STANLEY. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and "Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.").

 

The WHOIS information for <morgan--stanley.com> indicates that "Kyson Ale" is the domain name's registrant and there is nothing in the record that tends to prove that Respondent is known by the <morgan--stanley.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under the Policy. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the confusingly similar <morgan--stanley.com> domain name to address a website that purports to offer financial services. The website is constructed to deceive site visitors into falsely believing that the website is affiliated with Complainant. Respondent's use of <morgan--stanley.com> in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting internet users to a competing commercial site); see also Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy.

 

Respondent's at-issue domain name addresses Respondent's <morgan--stanley.com> website. Respondent uses the website, adorned with the MORGAN STANLEY trademark, so that Respondent may pass itself off as Complainant and deceive internet users into falsely believing that the domain name and its website are sponsored by Complainant. Furthermore, Respondent's <morgan--stanley.com> website offers likely fake financial services that appear to compete with Complainant's offerings. Respondent's use of the confusingly similar domain name in this manner is disruptive to Complainant's business and intended to attract internet users so that Respondent may capitalize on the confusion Respondent created between its <morgan--stanley.com> domain name and Complainant's MORGAN STANLEY trademark. Respondent's use of <morgan--stanley.com> thus demonstrates Respondent's bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant."); see also, G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract internet users to its commercial website to sell the complainant's products ); see also, Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant."). Notably, even given that Respondent is offering fake services; Respondent's bad faith is nevertheless demonstrated. See E*Trade Financial Holdings, LLC v. Alex Drown, FA 2013318 (Forum Oct. 21, 2022) (finding that a website offering fake financial services was evidence of bad faith registration and use of the at-issue domain name).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the MORGAN STANLEY mark when it registered <morgan--stanley.com> as a domain name. Respondent's actual prior knowledge of Complainant's trademark is evident from the notoriety of Complainant's mark and from Respondent's use of <morgan--stanley.com> to pose as Complainant and purport to offer financial services. Respondent's registration and use of a confusingly similar domain name with knowledge of Complainant's rights in MORGAN STANLEY further shows Respondent's bad faith registration and use of <morgan--stanley.com> pursuant to the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) ("Complainant contends Respondent's appropriation of Complainant's trademark was a clear intent to trade upon Complainant's reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant's mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii)."); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <morgan--stanley.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: April 9, 2024