Morgan Stanley v. Tangzhou c/o Tang Zhou
Claim Number: FA1103001378044
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Tangzhou c/o Tang Zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us>, registered with Go Daddy.com, Inc.
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 (the “Forum”) electronically on March 15, 2011; the Forum received a hard copy of the Complaint on March 15, 2011.
On March 15, 2011, Go Daddy.com, Inc. confirmed by e-mail to the Forum that the <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us> domain names are registered with Go Daddy.com, Inc. and that Respondent is the current registrant of the names. Go Daddy.com, Inc. has verified that Respondent is bound by the Go Daddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 16, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 5, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.
A. Complainant makes the following assertions:
1. Respondent’s <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us> domain names.
3. Respondent registered and used the <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers financial and investment and wealth management services to a full range of clients in 37 countries through a combination of institutional and retail capabilities. Complainant owns multiple trademark registrations for the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) and the Chinese State Intellectual Property Office (“SIPO”):
USPTO
Reg. No. 1,707,196 issued August 11, 1992;
SIPO
Reg. No. 607,509 issued August 20, 1992; and
Reg. No. 775,116 issued January 7, 1995.
Respondent, Tangzhou c/o Tang Zhou, registered the <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us> domain names on March 9, 2011. The disputed domain names all resolve to websites stating only that the domain name is for sale.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns multiple trademark registrations for the MORGAN STANLEY mark with the USPTO and the SIPO:
USPTO
Reg. No. 1,707,196 issued August 11, 1992;
SIPO
Reg. No. 607,509 issued August 20, 1992; and
Reg. No. 775,116 issued January 7, 1995.
The Panel finds Complainant has established rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i) through these trademark registrations. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant contends that Respondent’s <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark because the disputed domain names only delete the space between the terms of Complainant’s mark and add one or more of the following elements: the descriptive or generic terms “wealth,” “advisors,” “private,” “global,” or “management” and the country code top-level domain (“ccTLD”) “.us.” The Panel finds that adding generic or descriptive words to Complainant’s mark does not alleviate confusing similarity. See American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)); see also American Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). The Panel also finds that deleting the space between terms does not eliminate confusing similarity. See American Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Finally, the Panel concludes that the addition of a ccTLD is irrelevant in distinguishing between a disputed domain name and Complainant’s mark. See G.D. Searle & Co. v. Benavides, FA 117024 (Nat Arb. Forum Sept. 6, 2002) (holding the <1celebrex.com> domain name was confusingly similar to the CELEBREX mark because the ccTLD “.us” was inconsequential). The Panel therefore determines that Respondent’s <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, and <morganstanleywealthmanagement.us> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also 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 [UDRP].”).
However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the disputed domain names. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not a licensee of Complainant and has never been authorized by Complainant to use Complainant’s mark. Complainant asserts that Respondent has no relationship whatsoever to Complainant. The WHOIS information for the disputed domain name lists the registrant of the disputed domain names as “Tangzhou c/o Tang Zhou,” which the Panel finds has no association with the disputed domain names. The Panel thus concludes that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(iii). 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 alleges that Respondent’s disputed domain names display a message that the disputed domain names are for sale. The Panel finds that offering the disputed domain names for sale indicates that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii) and thus has no rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under UDRP ¶ 4(a)(ii)); 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that all the disputed domain names resolve to a web page with no content other than a simple message advertising that the domain names are for sale. The Panel finds that this effort to sell the disputed domain names reveals Respondent’s 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 [UDRP] ¶ 4(b)(i).”); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleywealthadvisors.us>, <morganstanleyprivatewealthadvisors.us>, <morganstanleyglobalwealthadvisors.us>, <morganstanleyglobalwealthmanagement.us>, <morganstanleywealthmanagement.us> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 20, 2011
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