Morgan Stanley v. Ke Zhao
Claim Number: FA1004001317816
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 <morganstanleyhedgefunds.com>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2010
On April 8, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <morganstanleyhedgefunds.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 April 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@morganstanleyhedgefunds.com by email. Also on April 12, 2010, the 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 May 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morganstanleyhedgefunds.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyhedgefunds.com> domain name.
3. Respondent registered and used the <morganstanleyhedgefunds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, operates several financial and investment service businesses that it offers to business and individual clients around the world. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MORGAN STANLEY mark (e.g., Reg. No. 1,707,196 issued Aug. 11, 1992).
Respondent, Ke Zhao, registered the <morganstanleyhedgefunds.com> domain name on March 1, 2010. Respondent’s disputed domain name resolves to a website that displays third-party links to competitors of Complainant in the financial services market as well as to businesses that are unrelated to Complainant.
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.
The Panel finds that Complainant has established rights in
its MORGAN STANLEY mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (e.g.
Reg. No. 1,707,196 issued on Aug. 11, 1992).
See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v.
Renaissance
Respondent’s <morganstanleyhedgefunds.com> domain name contains Complainant’s entire mark, deletes the space between the terms of the mark, adds the descriptive term “hedge funds,” and the generic top-level domain (“gTLD”) “.com.” Complainant argues that the additions to its mark are not sufficient to distinguish the disputed domain name from Complainant’s mark. The Panel agrees and finds Respondent’s <morganstanleyhedgefunds.com> domain name to confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <morganstanleyhedgefunds.com>
domain name. Complainant is required to
make a prima facie case in support of
these allegations. Once Complainant has
produced a prima facie case the
burden shifts to Respondent to show that it possesses rights or legitimate
interests in the disputed domain name. See Domtar,
Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see
also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by
the complainant, the burden then shifts to the respondent to demonstrate its
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)). The Panel finds that Complainant
has established a prima facie
case. Due to Respondent’s failure to
respond to these proceedings the Panel may assume Respondent does not have any
rights or legitimate interests in the disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel will examine the evidence on record and determine
whether Respondent has rights or legitimate interests in the <morganstanleyhedgefunds.com> domain
name under Policy ¶ 4(c).
Complainant contends that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain identifies “Ke Zhao” as the registrant, and the Panel finds no further evidence on record showing that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the <morganstanleyhedgefunds.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name resolves to a website that
displays third-party links to websites offering goods and services of
Complainant’s competitors in the financial services and planning industry. The Panel finds that Respondent’s use of the
disputed domain name to redirect Internet users to Complainant’s competitors,
presumably for financial gain, does not constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant
to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also Glaxo Group Ltd. v.
WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site). Therefore, the Panel finds that
Respondent has no rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the <morganstanleyhedgefunds.com> domain name
to divert Internet users to Respondent’s website that displays third-party
links to Complainant’s competitors disrupts Complainant’s business and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent’s
registration and use of the disputed domain name constitutes bad faith under
Policy ¶ 4(b)(iii) because Respondent’s disputed domain name diverts Internet
users seeking Complainant’s services to the services of Complainant’s
competitors thereby creating a disruption to Complainant’s business. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also St. Lawrence Univ. v. Nextnet Tech,
FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further alleges that Respondent is using the disputed domain name to intentionally divert Internet users to Respondent’s website that displays third-party links to competing businesses and websites. In this case the Panel presumes that Respondent is collecting click-through fees and is attempting to profit by creating a likelihood of confusion between the Complainant’s MORGAN STANLEY mark and the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to intentionally attract Internet users for commercial gain is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that 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 <morganstanleyhedgefunds.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 17, 2010
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