Morgan Stanley v. James c/o Topedu Ltd.
Claim Number: FA1005001324497
Complainant is Morgan
Stanley (“Complainant”), represented by Eric J. Shimanoff, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mufj-morganstanley.com>, registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2010. The Complaint was submitted in both Chinese and English.
On May 18, 2010, Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp confirmed by e-mail to the National Arbitration Forum that the <mufj-morganstanley.com> domain name is registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp and that Respondent is the current registrant of the name. Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp has verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 21, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 10, 2010 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@mufj-morganstanley.com. Also on May 21, 2010, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mufj-morganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <mufj-morganstanley.com> domain name.
3. Respondent registered and used the <mufj-morganstanley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is a provider of financial and investment services to clients around the world. Complainant owns numerous trademark registrations around the world for the MORGAN STANLEY marks, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 issued August 11, 1992), the Japan Patent Office (“JPO”) (e.g., Reg. No. 4,629,128 issued December 13, 2002), and China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 607,509 issued August 20, 1992).
Respondent, James c/o Topedu Ltd., registered the <mufj-morganstanley.com> domain name on March 31, 2010, one day after the public announcement of a joint venture agreement between Complainant and Mitsubishi UFJ Financial Group. The disputed domain name resolves to a website advertising the domain name for sale.
Respondent has been the respondent in at least three other UDRP proceedings in which the disputed domain names were transferred to the respective complainants. E.g., Disney Enters. v. Topedu Ltd., DCN-0800248 (HKIAC Oct. 27, 2008); Imperial Chem. Indus. PLC v. James / Topedu Ltd., DCN-0800301 (HKIAC Feb. 13, 2009); Samsung Elecs. Co., Ltd. v. Topedu Ltd., CND-2008000181 (CIETAC Feb. 1, 2009).
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant owns numerous trademark registrations around the
world for the MORGAN STANLEY marks, including with the USPTO (e.g., Reg. No. 1,707,196 issued August
11, 1992), the JPO (e.g., Reg. No.
4,629,128 issued December 13, 2002), and
Complainant contends that the <mufj-morganstanley.com> domain name is confusingly similar to
the MORGAN STANLEY mark. Complainant
argues that the disputed domain name features Complainant’s MORGAN STANLEY mark
but without the space between the terms and preceded
by the letters “m,” “u,” “f,” and “j” and a hyphen. Complainant asserts that “MUFJ” is an acronym
for Mitsubishi UFJ Financial Group, a Japanese bank with which Complainant has
joint venture agreements since May 2010. Additionally, the disputed domain name
includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that an added term or
acronym, especially one that has a relation to Complainant’s business as in
this case, and a hyphen, fail to distinguish the disputed domain name for the
purposes of Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum
Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term
descriptive of Complainant’s business, the addition of a hyphen, and the
addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain
name from Complainant’s mark.”); see also
America Online, Inc. v. Kang, FA 193726 (Nat. Arb. Forum Oct. 24, 2003)
(“Addition of generic words/acronyms to another’s mark is insufficient to
distinguish a domain name from another’s mark.”); see also Health Devices Corp. v.
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶ 4(a)(ii), Complainant must first present a prima facie case against Respondent. The Panel has determined that Complainant has adequately met this burden in the instant proceedings. Subsequently, the burden to demonstrate rights and legitimate interests in the disputed domain name transfers to Respondent. Respondent’s failure to respond to the Complaint indicates that Respondent has not met this burden. The Panel may therefore infer that Respondent lacks rights and legitimate interests in the disputed domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The Panel elects to consider the evidence presented, however, in light of the Policy ¶ 4(c) factors in order to determine whether Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is neither commonly known by the <mufj-morganstanley.com> domain name nor authorized to use Complainant’s mark in the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “James Topedu Ltd.” This name has no apparent association to the disputed domain name, supporting the conclusion that Respondent is not commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant asserts that the website resolving from the <mufj-morganstanley.com> domain name resolves to a website with no content other than a message indicating that the domain name is for sale. The Panel finds that the for sale message advertised on the website resolving from the <mufj-morganstanley.com> domain name further demonstrates Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant argues that Respondent’s <mujf-morganstanley.com> resolves to
a website only displaying a message that the domain is for sale. The Panel finds that Respondent’s willingness
to sell in conjunction with its failure to actively use the domain name for another
legitimate purpose reveals bad faith registration and use according to Policy ¶
4(b)(i). See Bank of Am. Corp. v. Northwest Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also Grundfos A/S
v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use
the domain name in any context other than to offer it for sale to the
complainant amounts to a use of the domain name in bad faith).
Complainant contends
that Respondent has registered over 600 domain names. Complainant also asserts that Respondent has
a history and pattern of registering domain names that incorporate other
parties’ marks as Respondent has been the respondent in at least three other
UDRP proceedings in which the disputed domain names were transferred to the
respective complainants. E.g., Disney Enters. v. Topedu Ltd., DCN-0800248
(HKIAC Oct. 27, 2008); Imperial Chem.
Indus. PLC v. James / Topedu Ltd., DCN-0800301 (HKIAC Feb. 13, 2009); Samsung Elecs. Co., Ltd. v. Topedu Ltd.,
CND-2008000181 (CIETAC Feb. 1, 2009).
The Panel finds that Respondent’s history of registering domain names
appropriating another’s mark shows a pattern of registering domain names in bad
faith pursuant to Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Complainant contends
that Respondent registered the <mufj-morganstanley.com>
domain name that combines Complainant’s mark with the acronym of a company with
which Complainant recently entered a joint venture agreement only one day after
the public announcement of that joint venture agreement. The Panel finds that the circumstances of
Respondent’s registration of the disputed domain name indicate opportunistic
bad faith according to Policy ¶ 4(a)(iii). See Thermo Electron Corp. v.
Xu, FA 713851 (Nat. Arb. Forum
July 12, 2006) (“If there had been any doubt as to bad faith, the fact that
registration was on the same day the news leaked about the merger, which was
put in evidence, is a compelling indication of bad faith that [the] respondent
has to refute and which he has failed to do.
The panel finds a negative inference from this.”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of
the disputed domain name the same day that Complainant issued the press release
regarding the acquisition constitutes opportunistic bad faith.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mufj-morganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 16, 2010
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