Morgan Stanley v. Corporate Domain Portfolios c/o Ye Genrong
Claim Number: FA1006001328821
Complainant is Morgan
Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C.,
New York, USA. Respondent is Corporate Domain Portfolios c/o Ye Genrong (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanleywm.com>, registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP.
The undersigned certifies that she has 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 National Arbitration Forum electronically June 8, 2010 in both the Chinese and English languages.
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 <morganstanleywm.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 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@morganstanleywm.com by e-mail. Also on June 17, 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 July 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 in this proceeding:
1. The domain name that Respondent registered, <morganstanleywm.com>, is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent has no rights to or legitimate interests in the <morganstanleywm.com> domain name.
3. Respondent registered and used the <morganstanleywm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is a global financial services
company that has offered financial advisement to businesses, governments, and
investors since 1935. 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) and with the
Respondent, Corporate Domain Portfolios c/o Ye Genrong, registered the <morganstanleywm.com> domain name April 7, 2010. Respondent’s disputed domain name resolves to a website that displays third-party links to financial and investment advisement companies in competition with Complainant. Respondent also offers to sell the disputed domain name on its website.
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."
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(e), 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 (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 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.
The Panel finds that Complainant submitted sufficient evidence to establish that it has rights in its MORGAN STANLEY mark under Policy ¶ 4(a)(i) through Complainant’s multiple trademark registrations with the USPTO (e.g., Reg. No. 1,707,196 issued Aug. 11, 1992) and the SIPO (e.g., Reg. No. 607509 issued Aug. 20, 1992). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant urges that Respondent’s <morganstanleywm.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant contends that the disputed domain
name contains Complainant’s mark in its entirely with the addition of the
letters “wm,” which Complainant contends, stand for the descriptive term
“wealth management,” and then adds the generic top-level domain (“gTLD”)
“.com.” Complainant argues that the
noted additions to its mark are not sufficient to render the disputed domain
name distinct from Complainant’s mark.
The Panel agrees and finds that the <morganstanleywm.com >
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under
Policy ¶ 4(a)(i).
See Kelson Physician Partners,
Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is
identical or confusingly similar to the complainant’s federally registered
service mark, KELSON); see also Am.
Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000)
(finding that the respondent’s domain name <go2AOL.com> was confusingly
similar to the complainant’s AOL mark); see
also Jerry Damson, Inc. v.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to
or legitimate interests in the <morganstanleywm.com> domain
name. Complainant is required to make a prima facie case to support its
allegations. Once Complainant does so,
the burden of proof shifts to Respondent to show that it does have rights to or
legitimate interests in the <morganstanleywm.com> domain
name. 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.”).
The Panel finds that Complainant made a prima facie showing. Given Respondent’s failure to respond to these
proceedings, the Panel may assume that Respondent has no such rights or
legitimate interests in the disputed domain name. See Am. 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.”).
However, this Panel still examines the record to determine whether the evidence suggests that Respondent may have rights or legitimate interests in the <morganstanleywm.com> domain name pursuant to Policy ¶ 4(c).
Complainant asserts that it did not give Respondent permission to use its MORGAN STANLEY mark in any way, and that, further, Respondent is not commonly known by the <morganstanleywm.com> domain name. The WHOIS information list the registrant of the disputed domain name as “Corporate Domain Portfolios c/o Ye Genrong,” which shows that Respondent is not commonly known by the disputed domain name. The Panel finds that Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent cannot show rights to or legitimate interests in the disputed domain under a Policy ¶ 4(c)(ii) analysis. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant further alleges that Respondent’s use of the
disputed domain to display third-party links to competitors of Complainant in
the investment and financial services industry is evidence that Respondent
lacks rights and legitimate interests in the disputed domain name. Additionally, Complainant argues that
Respondent’s use of the <morganstanleywm.com> domain name to
divert Internet users to the websites of Complainant’s competitors, presumably
for it own financial gain, is not a use in connection with a bona fide offering of goods or services. The Panel finds that Respondent’s use of the
disputed domain to redirect Internet users to the websites of Complainant’s
competitors is not a bona fide offering
of goods or services under a Policy ¶ 4(c)(i) analysis
and it is not a legitimate noncommercial or fair use under a Policy ¶ 4(c)(iii)
review. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb.
Forum Aug. 30, 2005) (finding that the respondent’s use of the
<expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v.
Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of
domain names confusingly similar to the complainant’s WAL-MART mark to divert
Internet users seeking the complainant’s goods and services to websites
competing with the complainant did not constitute 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)).
Complainant also contends that Respondent is attempting to sell the disputed domain name openly to the public through its website. Complainant argues that an open offer to sell a disputed domain name constitutes evidence that Respondent lacks rights and legitimate interests in the domain name. The Panel agrees and finds that Respondent’s general offer to sell the disputed domain name is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also 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).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also contends that Respondent registered and used the disputed domain name in bad faith. Respondent offers to sell the disputed domain name on Respondent’s website for the disputed domain name. Complainant argues that Respondent’s general offer to sell the <morganstanleywm.com> domain name is evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i). The Panel finds that Respondent’s general offer to sell the disputed domain name is evidence that supports findings that Respondent registered and is using the disputed domain name in 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”).
Complainant further urges that Respondent registered and is using the <morganstanleywm.com> domain name in bad faith because Respondent is diverting Internet users seeking Complainant’s financial services to the businesses of Complainant’s competitors. Complainant contends that this diversion scheme results in lost profits and business to Complainant because some Internet users will follow the third-party links to a competing business. The Panel finds that Respondent’s use of the confusingly similar <morganstanleywm.com> domain name to redirect Internet users to the websites and businesses of Complainant’s competitors constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant next argues that Respondent is using the <morganstanleywm.com> domain name to intentionally attract Internet users to Respondent’s directory website that diverts Internet users to Complainant’s competitors, presumably collecting click-through fees for the third-party links displayed on Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name to maintain a directory website of Complainant’s competitors in the banking and financial services industry, presumably for Respondent’s own financial gain, is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); 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).
The Panel finds that Respondent registered and used the disputed domain name 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 relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleywm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 25, 2010.
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