Morgan Stanley won a decision against a cybersquatter over a domain name that included the letters “MS" — even though the financial services firm apparently doesn’t own any trademark registrations for those letters, which are simply an abbreviation for its MORGAN STANLEY trademark.
I discuss the decision in a new YouTube video.
The decision provides an interesting lesson about how some panels under the Uniform Domain Name Dispute Resolution Policy (UDRP) may find that certain abbreviations of trademarks are confusingly similar to the trademarks.
The dispute involved the domain name <ms-manangement.com>, which, according to the UDRP decision published in February 2022, was being used by the respondent in connection with a phishing scheme that sent fraudulent emails containing Morgan Stanley’s trademark, logo, and physical address – common tactics employed by cybersquatters trying to imitate someone else, often with the intent of getting someone to pay a fake invoice, or to send payment for a real invoice to the wrong account.
Phishing clearly constitutes bad faith under the third element of the UDRP, but what makes this case interesting is not how the domain name was being used but what the domain name itself actually contained: the letters “MS.”
According to the decision, Morgan Stanley has rights in the trademark MORGAN STANLEY through a 1992 registration at the U.S. Patent and Trademark Office, as well as other registrations worldwide that make the MORGAN STANLEY mark famous.
But interestingly, the UDRP decision does not refer to any trademarks for MS owned by Morgan Stanley, based on registrations or common law rights. Still, here’s what the panel wrote:
The disputed domain name consists [of] the term MS, a common acronym for Complainant’s business name Morgan Stanley and mark MORGAN STANLEY, a hyphen, the descriptive term “management”, and the gTLD .com. These changes fail sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i)…. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Despite this cursory examination of the issue, I discuss another legal theory that a trademark owner may be able to rely upon when arguing that an abbreviation of its trademark is confusingly similar for purposes of the UDRP.
For a link to the UDRP decision in the Morgan Stanley case, see the description in my video.
