Morgan Stanley v. Li Ye
Claim Number: FA1006001328819
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Li Ye (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanleyhedgefund.com>, registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2010. The Complaint was submitted in both Chinese and English.
On June 11, 2010, XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP confirmed by e-mail to the National Arbitration Forum that the <morganstanleyhedgefund.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 June 17, 2010, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 7, 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@morganstanleyhedgefund.com. Also on June 17, 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 July 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
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 <morganstanleyhedgefund.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyhedgefund.com> domain name.
3. Respondent registered and used the <morganstanleyhedgefund.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services to clients in 37 countries. Complainant holds multiple trademark registrations for its MORGAN STANLEY family of marks throughout the world including the United States Patent and Trademark Office (“USPTO”) and China’s State Intellectual Property Office (“SIPO”):
MORGAN STANLEY USPTO 1,707,196 August 11, 1992
MORGAN STANLEY USPTO 2,759,476 September 2, 2003
CLIENT LINK
MORGAN STANLEY USPTO 2,852,094 June 8, 2004
VISION
MORGAN STANLEY USPTO 2,872,848 August 10, 2004
ACCESS
MORGAN STANLEY USPTO 2,919,873 January 18, 2005
INVESTOR SYTLES
MORGAN STANLEY USPTO 2,968,441 July 12, 2005
CLIENTONE
MORGAN STANLEY USPTO 3,096,321 May 23, 2006
CLIENTONE
MORGAN STANLEY SIPO 607,509 August 20, 1992
MORGAN STANLEY SIPO 775,116 January 7, 1995
Respondent, Li Ye, registered the disputed domain name on April 9, 2010. The disputed domain name resolves to a parked website displaying links to third-party businesses offering services that compete with Complainant’s services in the financial industry. The resolving website contains a generic offer to sell the disputed domain name.
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’s numerous trademark registrations are conclusive evidence of Complainant’s rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <morganstanleyhedgefund.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Respondent’s disputed domain name incorporates the entirety of Complainant’s mark and merely removes the space separating the terms in the mark and adds the descriptive term “hedge fund” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these changes do not adequately distinguish the disputed domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant must first establish a prima facie case in support of its assertions before the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. The Panel finds that, based on the arguments made in the Complaint, Complainant has established a prima facie case. The Panel further finds that Respondent’s failure to submit a Response to these proceedings is tantamount to Respondent’s acceptance of Complainant’s allegations as true. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel will examine the record to determine whether Respondent has legitimate rights and interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that neither the disputed domain name nor Complainant’s mark is a part of Respondent’s personal name and that Respondent does not actually conduct any business under either Complainant’s mark or the disputed domain name. Complainant states that Respondent is not a licensee of Complainant and that Respondent has never been authorized by Complainant to use Complainant’s MORGAN STANLEY mark or register a domain name incorporating said mark. Additionally, the WHOIS information for the disputed domain name indicates the registrant is “Li Ye.” Therefore, the Panel finds that Respondent is not commonly known by the <morganstanleyhedgefund.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s disputed domain name resolves to a parked website that contains links to third-party businesses offering services that compete with Complainant’s services. Complainant further asserts that Respondent likely receives click-through fees through its use of the disputed domain name in this manner. The Panel agrees with Complainant and finds that Respondent’s use of the disputed domain name for this purpose is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Complainant state that the website resolving from Respondent’s disputed domain name contains a generic offer to sell the disputed domain name to the public. The Panel finds that a generic offer to sell is further evidence of Respondent’s lack of rights and legitimate interests in the <morganstanleyhedgefund.com> domain name 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 that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s offer to sell the disputed
domain name is also evidence of Respondent’s bad faith under Policy ¶
4(b)(i). See Bank of Am. Corp. v. Nw. 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
Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
Respondent’s use of the disputed domain name to link Internet users seeking Complainant to the websites of Complainant’s competitors in the financial services industry constitutes a disruption of Complainant’s business. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 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).”).
Respondent presumably receives click-through fees from the
links displayed on the website resolving from the <morganstanleyhedgefund.com>
domain name which consequently
results in a financial benefit for Respondent.
Complainant argues that even if Respondent does not receive
click-through fees, because the disputed domain name is a “parked” page and the
fees were paid directly to the registrar, Respondent still acted in bad faith
as Respondent allowed the disputed domain name to be used to attract, for
commercial gain, Internet users who may be confused as to Complainant’s
affiliation with the resolving website.
The Panel finds Complainant’s arguments persuasive and therefore finds
that Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See AOL LLC v. AIM Profiles, FA 964479 (Nat.
Arb. Forum May 20, 2007) (finding that the respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was commercially gaining from the likelihood of confusion between
the complainant’s AIM mark and the competing instant messaging products and
services advertised on the respondent’s website which resolved from the
disputed domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June
8, 2007) (finding bad faith registration and use even where the “respondent
[was] adamant that he [was] not receiving click-through referral fees generated
from the websites at which the Disputed Domains [were] ‘parked.’ …for a number
of reasons, the panel [found] that it [was] irrelevant whether or not
respondent [was] personally receiving any of those click-through referral fees…
the key fact here is that respondent, in collaboration with the domain parking
service is exploiting complainant’s good will.”).
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 <morganstanleyhedgefund.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 20, 2010
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