DECISION

 

Morgan Stanley v. Nana Sunkwa

Claim Number: FA2503002145812

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <advisormorganstanley.com>, registered with Global Domain Group LLC.

 

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 March 18, 2025; Forum received payment on March 18, 2025.

 

On March 19, 2025, Global Domain Group LLC confirmed by e-mail to Forum that the <advisormorganstanley.com> domain name is registered with Global Domain Group LLC and that Respondent is the current registrant of the name. Global Domain Group LLC has verified that Respondent is bound by the Global Domain Group 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 20, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2025 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@advisormorganstanley.com. Also on March 20, 2025, 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 10, 2025, 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 fully incorporates Complainant's mark, with only the addition of generic or descriptive term "advisor" and the ".com" gTLD.

 

ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant's MORGAN STANLEY mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain resolved to a website impersonating Complainant and its financial advisor. The site falsely offered financial services under the name and mark "MORGAN STANLEY," used a logo identical or nearly identical to Complainant's, and misrepresented its financial advisor's credentials by copying content from Complainant's official website.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent's choice of a domain name confusingly similar to Complainant's well-known MORGAN STANLEY marks appears deliberate, lacking any legitimate explanation beyond capitalizing on Complainant's reputation. By impersonating Complainant and its financial advisor, Respondent falsely suggests an affiliation, constituting bad faith and a violation of intellectual property rights. Given the global recognition and registration of Complainant's marks, Respondent is presumed to have been aware of them when registering the domain.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on February 9, 2025.

 

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 resolved to a website impersonating Complainant and its financial advisor.

 

4. The disputed domain name's resolving website falsely offered financial services under the name and mark "MORGAN STANLEY," used a logo identical or nearly identical to Complainant's, and misrepresented its financial advisor's credentials by copying content from Complainant's official website.

 

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 on its registration with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). Registration of a mark with the USPTO is considered valid evidence of rights under Policy ¶ 4(a)(i). As Complainant has submitted proof of the USPTO registration for the MORGAN STANLEY mark, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name, <advisormorganstanley.com>, is confusingly similar to its MORGAN STANLEY mark because the addition of a descriptive term and a gTLD does not distinguish the domain from the incorporated mark for purposes of Policy ¶ 4(a)(i).

 

The Panel finds that the disputed domain name simply appends the descriptive word "advisor" and the ".com" gTLD to Complainant's mark. Accordingly, it is confusingly similar to the 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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "Nana Sunkwa" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant. Complainant highlights that the website to which the disputed domain name resolves falsely offers financial services under the name and mark "MORGAN STANLEY," uses a logo identical or nearly identical to Complainant's, and misrepresents the credentials of Complainant's financial advisor by copying content from Complainant's official website.

 

The Panel finds that such fraudulent use of the disputed domain name to impersonate Complainant and create a false association does not constitute a legitimate use of the domain name or a bona fide offering of goods or 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.").

 

The Panel finds that Complainant has established a prima facie case based on the foregoing. All of these circumstances support the prima facie case against Respondent. As Respondent has not submitted a Response or otherwise attempted to rebut the prima facie showing, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and is using the disputed domain name in bad faith, as Respondent has employed the domain to impersonate and create a false association with Complainant and its financial advisor. As noted above, the website to which the disputed domain name resolves falsely offers financial services under the name and mark "MORGAN STANLEY," uses a logo identical or nearly identical to Complainant's, and misrepresents the credentials of Complainant's financial advisor by copying content from Complainant's official website.

 

The Panel finds that such false association and passing off, in violation of Complainant's intellectual property rights, constitutes bad faith registration and use. 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).").

 

Complainant further contends that Respondent registered the disputed domain name in bad faith with knowledge of Complainant's MORGAN STANLEY mark. While constructive knowledge alone is insufficient to establish bad faith, the global notoriety of a mark may demonstrate actual knowledge at the time of registration and support a finding of bad faith under Policy ¶ 4(a)(iii). The Panel notes that Complainant operates in over 40 countries, employs more than 80,000 individuals globally, and provides international financial services and market access. Complainant has used marks incorporating MORGAN STANLEY in connection with financial and related services since at least 1935, and those marks continue to enjoy widespread use. In 2020, Complainant reported net revenues exceeding US$48 billion. Complainant has consistently ranked among Tenet Partners' (formerly CoreBrand) 100 Top Brands in the United States and was ranked 33rd and 34th, respectively, in Brand Finance's 2019 and 2020 Banking 500 global brand rankings. Accordingly, the MORGAN STANLEY mark is recognized as a well-known and reputable trademark.

 

The Panel therefore infers, based on the fame of Complainant's mark and Respondent's use of the disputed domain name, that Respondent registered the domain name with actual knowledge of Complainant's rights in the MORGAN STANLEY mark, supporting a finding of bad faith registration under 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 <advisormorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: April 10, 2025