Why Morgan Stanley lost the UDRP filed against MSFinancements.com

Financial giant, Morgan Stanley, owns rights to the mark MORGAN STANLEY and treats the letter pair “MS” as an abbreviated variant, apparently.

A French company, formed by two individuals, Medji Bamba and Sarah Pascual, uses the domain MSFinancements.com.

It’s not clear why Morgan Stanley’s lawyers believed they’d get this domain via the UDRP process, unless there has been some underlying activity not shared in the UDRP.

The web site at MSFinancements.com provides financial advice and other services. The sole panelist at the Forum (NAF) pointed out the meaning of “MS” in these statements:

The Complainant has a significant global reputation in its MORGAN STANLEY mark such that it would be implausible for any use of the MORGAN STANLEY mark in connection with financial services to be for any purpose other than to improperly associate the domain name with the Complainant.  The same cannot be said for the mere use of the abbreviation MS – which can be used for numerous reasons. […]

For these reasons I am unsatisfied that the registration and use of the Domain Name was motivated by any desire to take advantage of the reputation Complainant has in its MORGAN STANLEY mark (or its abbreviation) as opposed to the use of the abbreviation MS as an abbreviation of the names of the two proprietors of the business trading from the Respondent’s Website.  

Final decision: Deny transfer of MSFinancements. com to the Complainant. In our opinion, it could have been a case with a finding of Reverse Domain Name Hijacking.

The domain transfer was denied.

Morgan Stanley v. Medji BAMBA

Claim Number: FA2209002010789
PARTIES

Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, US. Respondent is Medji BAMBA (“Respondent”), France.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is msfinancements.com (“Domain Name”), registered with Online SAS.

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.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 2, 2022; Forum received payment on September 2, 2022.

On September 05, 2022, Online SAS confirmed by e-mail to Forum that the msfinancements.com domain name is registered with Online SAS and that Respondent is the current registrant of the names. Online SAS has verified that Respondent is bound by the Online SAS 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 September 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2022 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@msfinancements.com. Also on September 7, 2022, 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 4, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist. However, following appointment Forum became aware of an error in its understanding of the language of the Registration Agreement of the Domain Name and on October 6, 2022 notified the Complainant that the language of the Registration Agreement was French and invited the Complainant to translate the Complaint into French.

The Complainant did so and on October 10, 2022, the Forum served the English and French language Complaint and Written Notice of the Complaint on the Respondent, setting a deadline of October 27, 2022 by which Respondent could file a Response to the Complaint. The Respondent did not file a Response to the Complaint and on November 7, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum re-appointed Nicholas J.T. Smith 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.

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

The language of the Registration Agreement in this case is French. The Complaint has been provided in English and French and Complainant has indicated that pursuant to UDRP Rule 11(a) the language of the proceeding should be English.

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a formal Response, determines that the remainder of the proceedings may be conducted in English.

PARTIES’ CONTENTIONS

A. Complainant

Complainant offers a full range of financial, investment, and wealth management services. Complainant claims rights in the MORGAN STANLEY mark through 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 msfinancements.com is confusingly similar because it abbreviates the MORGAN STANLEY mark (“MS”) and adds the generic term “financements” (French for “finance”) and the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights or legitimate interests in the msfinancements.com domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the MORGAN STANLEY mark in any way. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to pass off as Complainant to offer competing services. Furthermore, Respondent causes initial interest confusion.

Respondent registered and uses the msfinancements.com domain in bad faith. Respondent uses the Domain Name to pass off as Complainant and disrupt their business by purportedly offering competing services. Furthermore, Respondent had constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the Domain Name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, having failed to establish that Respondent registered and used the Domain Name in bad faith, has not established all required elements of its claim, and thus its complaint must be denied.

DISCUSSION

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 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 has rights in the MORGAN STANLEY mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,707,196, registered August 11, 1992). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).

In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of confusing similarity.

Rights or Legitimate Interests

In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.

Registration and Use in Bad Faith

The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii), and thus the Panel need not consider the other elements. See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

The Complainant has a significant global reputation in its MORGAN STANLEY mark such that it would be implausible for any use of the MORGAN STANLEY mark in connection with financial services to be for any purpose other than to improperly associate the domain name with the Complainant. The same cannot be said for the mere use of the abbreviation MS – which can be used for numerous reasons. It is necessary to examine the Domain Name and the manner in which it is used (as set out in Exhibit 12 of the Complaint) to determine whether it was registered and is being used in bad faith.

The Domain Name consists of the abbreviation “MS” and the word “financements” (French for “finance”). I note that Complainant has provided no evidence of any registrations of MS as a trademark in France in connection with financial services.

The Domain Name resolves to a website (“Respondent’s Website”) that appears on its face to be an entirely legitimate financial advice practice that trades under the MS Financements name. This practice is run by two individuals, namely the Respondent, Medji Bamba, and an associate, Sarah Pascual. There is an obvious explanation on its face for the use of the MS Financements name, namely that MS is an abbreviation of the names of the two partners (Medji and Sarah) in the practice. The Respondent’s Website does not either explicitly or (to the best of the Panel’s knowledge) implicitly make any reference to Complainant or otherwise suggest an affiliation. The record does not indicate that Respondent has sought to register any other domain names incorporating the MORGAN STANLEY mark (or an abbreviation) or engage in any other conduct that suggests the use of the Domain Name is anything other than for a bona fide offering of services. Furthermore, while the services offered by the Complainant and the Respondent are both financial services, the scale and nature of the services offered by the respective parties (one being a global investment and financial services company and one being a two-person financial advice practice in France) are so different that it is difficult to imagine that the parties would compete in any realistic manner.

For these reasons I am unsatisfied that the registration and use of the Domain Name was motivated by any desire to take advantage of the reputation Complainant has in its MORGAN STANLEY mark (or its abbreviation) as opposed to the use of the abbreviation MS as an abbreviation of the names of the two proprietors of the business trading from the Respondent’s Website.

Finally, there is no other evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith). Respondent has not offered the Domain Name for sale, nor is there a basis for inferring such an intention. Respondent has not, on the basis of the evidence before the Panel, engaged in a pattern of conduct of registering domain names to prevent the owner of a mark for reflecting such a mark in a corresponding domain name. As noted above I am not satisfied that Respondent has registered the Domain Name for the purpose of disrupting the Complainant’s business nor has he sought to take advantage of any confusion with the Complainant’s MORGAN STANLEY mark.

The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”). This is not such a case. The Panel finds that Complainant has failed to prove that the Domain Name was registered or is used in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the msfinancements.com domain name REMAIN WITH Respondent.

Nicholas J.T. Smith, Panelist

Dated: November 8, 2022

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