Morgan Stanley v. Huang Rui
Claim Number: FA2107001955003
Complainant is Morgan Stanley ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Huang Rui ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstandleyfund.com> and <morganstandleysecurities.com>, registered with DNSPod, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2021; the Forum received payment on July 13, 2021. The Complaint was received in English.
On July 19, 2021, DNSPod, Inc. confirmed by email to the Forum that the <morganstandleyfund.com> and <morganstandleysecurities.com> domain names are registered with DNSPod, Inc. and that Respondent is the current registrant of the names. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 July 20, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 9, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@morganstandleyfund.com, postmaster@morganstandleysecurities.com. Also on July 20, 2021, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, asserting that Respondent is capable of proceeding in English and noting inter alia that the disputed domain names both combine an English-language mark with other English-language words. The Panel also notes that the Written Notice of the Complaint was served upon Respondent in both English and Chinese, and that Respondent has made no objection to Complainant's request that the proceeding be conducted in English nor indicated any intent to participate in the proceeding.
Under the circumstances, the Panel finds it likely that Respondent is conversant in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Chinese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. See, e.g., SPTC, Inc. & Sotheby's v. Zhang Wei / 张伟 / Xu Shuai Wei / 徐帅伟, FA 1936089 (Forum Apr. 13, 2021). The Panel decides that English shall be the language of this proceeding.
A. Complainant
Complainant is a global financial, investment, and wealth management services company. Complainant has more than 1,000 offices in over 40 countries, including China, and over 55,000 employees worldwide, including in China. Complainant has used MORGAN STANLEY and related marks in connection with this business since at least as early as 1935. Complainant's MORGAN STANLEY mark is registered in countries around the world, including the United States. Complainant asserts that its mark is famous and has become well known to consumers globally as a result of its extensive use and promotion.
Respondent registered the disputed domain names <morganstandleyfund.com> and <morganstandleysecurities.com> on June 27, 2021. The domain names do not resolve to websites. Complainant states that Respondent is not commonly known by the disputed domain names, is not a license of Complainant, and has not been authorized to register or use Complainant’s marks or the disputed domain names.
Complainant contends on the above grounds that each of the disputed domain names <morganstandleyfund.com> and <morganstandleysecurities.com> is confusingly similar to its MORGAN STANLEY mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <morganstandleyfund.com> and <morganstandleysecurities.com> incorporates Complainant's registered MORGAN STANLEY trademark (inserting a letter "D" and omitting the space), adding a generic term ("fund" or "securities") and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Morgan Stanley v. Domain Admin c/o Taranga Services Pty Ltd, FA 1306534 (Forum Apr. 1, 2010) (finding <morganstandley.com> confusingly similar to MORGAN STANLEY); Morgan Stanley v. Kenneth Chung c/o Bethesda Properties LLC, FA 1052609 (Forum Sept. 24, 2007) (finding <morganstanleyfunds.mobi> confusingly similar to MORGAN STANLEY); Morgan Stanley v. Richard Bluevelt, FA 1937802 (Forum Apr. 21, 2021) (finding <mstanleybonds.com> confusingly similar to MORGAN STANLEY). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names both incorporate Complainant's registered mark without authorization. Respondent does not appear to have made any active use of the domain names, nor to have engaged in preparations for such use. See Morgan Stanley v. Kenneth Chung c/o Bethesda Properties LLC, supra (inferring lack of rights or legitimate interests from respondent’s failure to respond to complaint and failure to make active use of domain name).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered two domain names incorporating a misspelling of Complainant’s famous mark, and has neither engaged in any apparent use or preparation for use of the domain names nor participated in this proceeding. The Panel therefore considers it reasonable to infer that Respondent registered the domain names intending to use them in a manner calculated to create and exploit confusion with Complainant and its marks, perhaps in support of a fraudulent phishing scheme, and that Respondent is maintaining the domain names for that purpose. See Morgan Stanley v. Stacey Wilson / hsbc, FA 1938103 (making such an inference in similar circumstances). See also Morgan Stanley v. Domain Admin c/o Taranga Services Pty Ltd, supra (considering registration of <morganstandley.com> to be typosquatting and evidence of bad faith); Morgan Stanley v. Kenneth Chung c/o Bethesda Properties LLC, supra (inferring bad faith where respondent failed to make active use of domain names incorporating MORGAN STANLEY mark). The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstandleyfund.com> and <morganstandleysecurities.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 20, 2021
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