Morgan Stanley v. Peng Bi / Bi Peng
Claim Number: FA1612001709188
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Peng Bi / Bi Peng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <exmorganstanley.com> and <ex-morganstanley.com>, registered with HiChina Zhicheng Technology Limited; and <morganstanley.red>, <morganstanley.band>, <morganstanley.pics>, <morganstanley.lol>, <morganstanley.studio>, <morganstanley.wiki>, <morganstanley.pub>, <morganstanley.kim>, <morganstanley.link>, <morganstanley.click>, and <morganstanley.live>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist..
Complainant submitted a Complaint to the Forum electronically December 22, 2016; the Forum received payment December 22, 2016.
On December 23, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that <exmorganstanley.com> and <ex-morganstanley.com> are registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited verified that Respondent is bound by the HiChina Zhicheng Technology Limited registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 29, 2016, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <morganstanley.red>, <morganstanley.band>, <morganstanley.pics>, <morganstanley.lol>, <morganstanley.studio>, <morganstanley.wiki>, <morganstanley.pub>, <morganstanley.kim>, <morganstanley.link>, <morganstanley.click>, and <morganstanley.live> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On January 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2017, 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@morganstanley.red, postmaster@morganstanley.band, postmaster@morganstanley.pics, postmaster@morganstanley.lol, postmaster@morganstanley.studio, postmaster@morganstanley.wiki, postmaster@exmorganstanley.com, postmaster@morganstanley.pub, postmaster@ex-morganstanley.com, postmaster@morganstanley.kim, postmaster@morganstanley.link, postmaster@morganstanley.click, and postmaster@morganstanley.live. Also on January 4, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On February 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson here as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant, Morgan Stanley, is a worldwide provider of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark based upon numerous registrations with the United States Patent and Trademark Office (“USPTO”) as well as China’s State Administration for Industry and Commerce (“SAIC”) (e.g., USPTO Reg. No. 1,707,196, registered Aug. 11, 1992; SAIC Reg. No. 607509, registered Aug. 20, 2002). See Compl., at Attached Ex. 6. Respondent’s domain names are identical or confusingly similar to the mark, as they all contain the mark in its entirety—less the space—with eleven of the names merely appending a generic top-level domain (“gTLD”), and two of the names appending a gTLD and the term “ex.” One of the disputed domain names also contains a hyphen.
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, and Complainant did not authorize Respondent to use the MORGAN STANLEY mark. Further, Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use with any of the disputed domains. Rather, the disputed domain names do not resolve to active websites.
Respondent registered and used the disputed domain names in bad faith. Respondent’s use and registration of the disputed domain names disrupts the business of Complainant by causing initial interest confusion. Additionally, Respondent targeted Complainant and the MORGAN STANLEY mark, showing that Respondent had actual knowledge of Complainant’s rights in the mark. Respondent’s failure to make an active use of the disputed domain names is further evidence of its bad faith.
Respondent’s Contentions in Response:
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered all of the disputed domain names December 19, 2016.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. Complainant submitted the Complaint in English only. Complainant contends that Respondent is fully capable of defending the Complaint in the English language for several reasons. First, the disputed domain names contain a famous English language mark and are registered in connection with gTLDs that primarily target English-speaking Internet users. Additionally, English is a common connecting language in business and travel, and asking Complainant to translate all of the documents in the proceeding into Chinese would add delay and additional costs to the proceeding. Finally, Respondent corresponded with counsel for Complainant in English. See Compl., at attached Ex. 9. The Panel notes that after review of the applicable rules on language of the proceedings under the UDRP, the Panel finds:
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant established that it has rights to and legitimate interests in the protected mark contained in its entirety within each of the disputed domain names.
Respondent has no such rights or legitimate interests in the mark or the disputed domain names.
Respondent registered a group of disputed domain names, set out above, that are
either identical to or confusingly similar to Complainant’s protected mark.
Respondent registered and used, or passive held, this entire group of disputed domain names 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant claims rights in the MORGAN STANLEY mark based on registration of the mark with the USPTO and SAIC (e.g., USPTO Reg. No. 1,707,196, registered Aug. 11, 1992; SAIC Reg. No. 607509, registered Aug. 20, 2002). See Compl., at Attached Ex. 6. Registration of a mark with a governmental trademark agency is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office); see also Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA 1621199 (Forum July 10, 2015) (holding, “Registration with the SAIC is sufficient to establish rights in a trademark.”). The Panel therefore finds that Complainant’s registration of the MORGAN STANLEY mark with the USPTO and SAIC is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant next contends that the <morganstanley.red>, <morganstanley.band>, <morganstanley.pics>, <morganstanley.lol>, <morganstanley.studio>, <morganstanley.wiki>, <morganstanley.pub>, <morganstanley.kim>, <morganstanley.link>, <morganstanley.click>, and <morganstanley.live> domain names are identical to the MORGAN STANLEY mark because they contain the mark in its entirety, merely omitting the space and adding a gTLD. The omission of spaces in a mark and addition of gTLDs in order to form domain names are both irrelevant to a Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). The Panel agrees and finds that the above disputed domain names are identical to the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Similarly, Complainant contends that <exmorganstanley.com> and <ex-morganstanley.com> are confusingly similar to the MORGAN STANLEY mark because they contain the mark in its entirety, omitting the space and adding a gTLD as above, and additionally adding only the term “ex,” and in the case of <ex-morganstanley.com>, a hyphen. Addition of a generic term does not distinguish a domain name in a Policy ¶ analysis for confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Likewise, the use of a hyphen in a domain name is irrelevant. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Accordingly, the Panel finds that <exmorganstanley.com> and <ex-morganstanley.com> are confusingly similar to the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered domain names that are either
identical to or confusingly similar to Complainant’s protected mark;
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the names and Complainant has not authorized Respondent to use the MORGAN STANLEY mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that in the WHOIS information of record here, a privacy service was used by Respondent in registering <exmorganstanley.com> and <ex-morganstanley.com>, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Peng Bi.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Complainant next claims that Respondent is not using the disputed domain names to make a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Rather, the disputed domain names do not resolve to active websites. See Compl., at Attached Ex. 8. Failure to make an active use of a disputed domain name is evidence of a lack of rights or legitimate interests in that name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees and finds that Respondent has not made a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain names.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends Respondent registered and used and/or passively held the disputed domain names in bad faith because the names cause initial interest confusion and thus disrupt Complainant’s business, which supports findings in bad faith as described in Policy ¶ 4(b)(iii). Disruption of a complainant’s business can be considered competition. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). But cf. Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”). The Panel finds Respondent’s registartion and use and/or passive holding of the disputed domain names to be disruptive and competitive behavior and finds Respondent to have acted in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also asserts that, due to its extensive list of trademark registrations in China and the United States, Respondent must have had constructive knowledge of Complainant's rights in the MORGAN STANLEY mark when Respondent registered the disputed domain names. Complainant further argues that in the registration of the disputed domain names Respondent was targeting Complainant and its marks, indicating that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge, which does not support findings of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant’s argument that Respondent had actual knowledge of Complainant’s rights in its protected mark, however, and concludes that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant further argues that Respondent’s failure to make an active use of the disputed domain names is evidence of its bad faith. Failure to make an active use of domain names can be evidence of a respondent’s bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel recalls that the disputed domain names do not resolve to active webpages. See Compl., at Attached Ex. 8.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Therefore, the Panel finds that Respondent registered and used and/or passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley.red>, <morganstanley.band>, <morganstanley.pics>, <morganstanley.lol>, <morganstanley.studio>, <morganstanley.wiki>, <exmorganstanley.com>, <morganstanley.pub>, <ex-morganstanley.com>, <morganstanley.kim>, <morganstanley.link>, <morganstanley.click>, and <morganstanley.live> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page