WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Morgan Stanley v. Ismail Sokhna, Talibe Sokhna
Case No. DIO2020-0015
1. The Parties
The Complainant is Morgan Stanley, United States of America (“United States”), represented by Cowan, Liebowitz & Latman, PC, United States.
The Respondents are Ismail Sokhna, France or Spain, and Talibe Sokhna, France.
2. The Domain Names and Registrar
The disputed domain names <msfinance.io> and <msfunds.io> are both registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 19, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on the same day.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 11, 2020.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 15, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant provides financial, investment, and wealth management services, including in connection with investment funds and investment banking. The Complainant’s corporate group has 1,000 offices in over 40 countries, including in France. The Complainant is a publicly traded company listed on the New York Stock Exchange and its common stock has traded under the ticker symbol “MS” since 2006.1 The Complainant owns multiple trademark registrations for MORGAN STANLEY, including United States trademark registration number 1,707,196 registered on August 11, 1992, with a claim of first use in commerce on September 16, 1935, specifying services in class 36 including certain financial services, and United States trademark registration number 4,470,389 registered on January 21, 2014, with a claim of first use in commerce on June 30, 2002, specifying goods in classes 9 and 16 including computer software for use in financial information services and the trading of funds; and, European Union trademark registration number 000175950 registered from April 1, 1996, specifying goods and services in classes 9, 16, and 36 including financial affairs. Those trademark registrations remain current. The Complainant has registered the domain name <ms.com> and uses it to redirect to its principal website associated with the domain name <morganstanley.com>, where it provides information about itself and its services. The Complainant also registered the domain name <msfunds.com> in 2000, and the domain name <msfunds.com.cn> in 2007, which it uses in connection with a website for Morgan Stanley Huaxin Funds.
The Respondents are named as two individuals. Written notice of the Complaint was accepted for both named Respondents at contact addresses in France, although the contact address for one also refers to a town and telephone number in Spain.
The disputed domain name <msfunds.io> was registered on December 22, 2019. It resolves to a website in French and English for a purported European investment fund named “MS Funds” that is described as 100% owned by an investment bank named “MS Finance”. The website invites Internet users to enter personal information. A legal notices page provides the Respondent’s purported identification details which include an email contact address and website address using the Complainant’s <msfunds.com> domain.
The disputed domain name <msfinance.io> was registered on March 13, 2020. It resolves to a website in French and English for a purported investment bank named “MS Finance” that offers services regarding the MS Funds investment fund. A hyperlink on the website labelled “SEE MS FUNDS” directs Internet users to the website associated with the disputed domain name <msfunds.io>.
Both websites display the same MS logo and the same street address in France.
5. Parties’ Contentions
A. Complainant
Based on the totality of the circumstances, the disputed domain names are confusingly similar to the Complainant’s MORGAN STANLEY mark. A Google search for webpages that contain both the terms “Morgan Stanley” and “MS” yielded over 5 million results. The Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years. The Complainant has been the owner of the domain name <ms.com> for over 25 years. The Complainant had registered numerous domain names containing or comprising “msfund” or “msfunds” in different Top-Level Domains (“TLDs”) before the registration of the disputed domain names. The Complainant operates a website at <www.msfunds.com.cn>, where it has offered investment fund services since at least 2008. The Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field. The only distinctive element of the disputed domain names is “MS”, which is the well-known initialism for the Complainant’s famous MORGAN STRANLEY mark. In each disputed domain name, “MS” is followed by a generic or descriptive term relating to the Complainant’s business and the financial services industry. The disputed domain name <msfunds.io> is nearly identical to the Complainant’s own <msfunds.com>, <msfunds.com.cn>, and similar domain names. Moreover, the Respondents have used the disputed domain names in connection with a website that seeks to impersonate or create a false association with the Complainant. This further supports a finding of confusing similarity.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. Neither MORGAN STANLEY nor the disputed domain names is part of the Respondents’ names. The Respondents are not licensees of the Complainant, nor have the Respondents ever been authorized by the Complainant to register or use the MORGAN STANLEY mark, the initialism “MS” or the disputed domain names. Indeed, the Respondents have no relationship whatsoever with the Complainant. The use of the disputed domain names – each of which incorporates the Complainant’s “MS” initialism – to resolve to a site offering financial services that compete with those offered by the Complainant under the names “MS Finance” and “MS Funds,” is not a bona fide offering of goods or services nor a legitimate or fair use.
The disputed domain names were registered and are being used in bad faith. There can be no doubt that the Respondents were aware of the Complainant’s MORGAN STANLEY marks and “MS” initialism when they chose and registered the disputed domain names, and in fact chose the disputed domain names because they are confusingly similar to the Complainant’s well-known marks. The Respondents intended to capitalize on that confusion by attracting users to their websites. The Respondents’ attempt to pass themselves off as, or affiliated with, the Complainant, its “MS” initialism, and its <msfunds.com> and similar domains names is also evidence of bad faith use and registration of the disputed domain names.
B. Respondent
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Consolidation: Multiple Domain Name Registrants
The amended Complaint initiates disputes in relation to two nominally different domain name registrants. The Complainant alleges that both disputed domain names are owned and/or controlled by a single respondent. The Complainant requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense, and effort of initiating multiple proceedings against domain name registrants which are only technically “different” based on an identity scheme engineered by the same registrant (or those acting in concert), particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or associated websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.2
As regards common control, the Panel notes that the disputed domain names were registered with the same registrant surname, in the same .IO TLD, with the same Registrar and the same privacy service and they are both hosted on the same name servers. The disputed domain names resolve to websites that both display the same MS logo and the same street address. One website is for an investment vehicle presented as wholly owned by the operator of the other website, while that other website displays a hyperlink to the first website. In these circumstances, the Panel is persuaded that the disputed domain names and the websites are under common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party – indeed consolidation seems the most fair and efficient path forward.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered or are being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MORGAN STANLEY mark.
The disputed domain names each incorporate two letters from the MORGAN STANLEY mark (i.e., “MS”) as their respective initial elements. “MS” is the only element in the disputed domain names that is not a dictionary word, i.e., that (“MS”) is the core and most obviously recognizable source-identifying element of the disputed domain names.
The Complainant provides evidence that the letters “MS” are widely understood as an abbreviation of its MORGAN STANLEY trademark. The evidence shows that MORGAN STANLEY is annually included in rankings of top brands produced by Tenet Partners and Brand Finance’s Banking Global 500 brands. “MS” has been the Complainant’s ticker symbol for the past 14 years on the New York Stock Exchange. The results of a Google search for “Morgan Stanley” and “MS” show that other parties often refer to the Complainant as “MS”, particularly when discussing its stock price. The Complainant has long used the domain name <ms.com> to redirect to its principal website associated with the domain name <morganstanley.com>.
Crucially, each disputed domain name combines the initials “MS” with a dictionary word that describes services provided by the Complainant, i.e., “finance” or “funds”. The Complainant itself has combined “MS” with one of these words in the domain name <msfunds.com.cn>, which it has used for at least 12 years with a website providing such services. The combination of the letters “MS” with these particular words gives the Panel reason to find that the disputed domain names incorporate the letters “MS" as an abbreviation of the MORGAN STANLEY mark. See Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair, WIPO Case No. D2015-1001. Put another way, in these circumstances, the omission of the other letters in the Complainant’s mark is not sufficient to avoid a finding of confusing similarity with the disputed domain names. See ZB, N.A., dba Zions First National Bank and ZB, N.A., dba Amegy Bank v. Cameron David Jackson, WIPOCase No. D2016-1452. The inclusion of dictionary words in the disputed domain names does not avoid a finding of confusing similarity; on the contrary, in this case, they are essential to that finding.
The Panel also takes note that the website associated with the disputed domain name <msfunds.io> includes the Complainant’s <msfunds.com> domain in the Respondent’s purported identification details, while the website associated with the disputed domain name <msfinance.io> links to the website associated with the disputed domain name <msfunds.io>. These additional circumstances confirm that the Respondent was seeking to target the MORGAN STANLEY trademark through the disputed domain names. See WIPO Overview 3.0, section 1.15; and Expeditors International of Washington, Inc. v. Kimmich Hulk, Expeditors Int'l Logistics and Whoisprotection.cc / Kimmich Hulk, Worldwide Expeditors Logistics, WIPOCase No. D2020-0437.
The only additional element in the disputed domain names is the country or territory code TLD (“.io”). As a technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that, on balance, the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The disputed domain names resolve to websites that purport to offer financial services. One of the websites falsely includes the Complainant’s <msfunds.com> domain in the Respondent’s purported identification details while the Respondent’s other website refers to that website. The Complainant submits that the Respondent is not a licensee of the Complainant, nor has the Respondent ever been authorized by the Complainant to register or use the MORGAN STANLEY mark, the initialism “MS”, or the disputed domain names. Indeed, the Respondent has no relationship whatsoever with the Complainant. Accordingly, the Panel does not consider this use of the disputed domain names to be in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondents’ names are listed in the Registrar’s WhoIs database as “Ismail Sokhna” and “Talibe Sokhna”, not the disputed domain names. According to the information on record, the Respondent’s initials are not “MS”. There is no evidence that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy.
The disputed domain names resolve to websites that purportedly offer financial services. The Panel does not consider that this use constitutes a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain names were registered in 2019 and 2020, many years after the Complainant obtained trademark registrations for MORGAN STANLEY, including in the European Union where the Respondent is apparently resident. The disputed domain names incorporate an abbreviation of the Complainant’s MORGAN STANLEY trademark and combine that with a dictionary word that describes the Complainant’s services. The operative element of the disputed domain name <msfunds.io> is also identical to a domain name (<msfunds.com.cn>) that the Complainant has long used to provide services. The website associated with the disputed domain name <msfunds.io> includes the Complainant’s <msfunds.com> domain in the Respondent’s purported identification details. The website associated with the disputed domain name <msfinance.io>, which was registered later in time, links to that other website. These facts indicate to the Panel that the Respondent was aware of the Complainant and targeted its MORGAN STANLEY trademark at the time that he registered the disputed domain names.
The Respondent uses the disputed domain names in connection with two websites, one of which is falsely presented as if it were affiliated with, or endorsed by, the Complainant, and the other of which links to it. The Respondent’s websites purportedly offer financial services of the same type as those offered by the Complainant. The website associated with the disputed domain name <msfunds.io> invites Internet users to disclose personal information. In view of these circumstances, the Panel finds that the disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s MORGAN STANLEY trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a service on those websites, within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <msfinance.io> and <msfunds.io> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: December 29, 2020
1 See https://www.morganstanley.com/press-releases/morgan-stanley-to-start-trading-under-ms-ticker-symbol_3724/.