Morgan Stanley v. Hong Chen a/k/a/ Hong Chen
Claim Number: FA1109001405989
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Hong Chen a/ka/ Hong Chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com>, registered with Godaddy.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2011; the National Arbitration Forum received payment on September 2, 2011.
On September 6, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the<morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2011 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@morganstanleycapitalgroup.com, postmaster@morganstanleyideas.com, and postmaster@morganstanleyinternational.com. Also on September 7, 2011, 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 October 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 (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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names.
3. Respondent registered and used the <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers financial, investment, and wealth management services under its MORGAN STANLEY mark. Complainant owns the MORGAN STANLEY mark and owns trademark registrations for the mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 607,509 registered August 20, 2002) and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992).
Respondent, Hong Chen a/k/a/ Hong Chen, registered the <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names on August 17, 2011. The <morganstanleycapitalgroup.com> domain name resolves to a website that features hyperlinks to Complainant’s competitors in the financial industry. The <morganstanleyideas.com> and <morganstanleyinternational.com> domain names resolve to websites containing hyperlinks to unrelated third-parties.
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.
As Complainant owns trademark registrations for its MORGAN STANLEY mark with the SAIC (e.g., Reg. No. 607,509 registered August 20, 2002) and with the USPTO (e.g., Reg. No. 1,707,196 registered August 11, 1992), the Panel determines that Complainant has rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i). 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 Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names combine Complainant’s MORGAN STANLEY mark, absent the space, with a descriptive or generic term and the generic top-level domain (“gTLD”) “.com.” As the Panel finds that these alterations fail to adequately distinguish the disputed domain names from Complainant’s mark, the Panel holds that Respondent’s disputed domain names are confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i). See Am. 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.”); see also Am. 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 Policy ¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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).
Complainant disavows any connection with Respondent as Respondent is not a licensee of Complainant and Complainant has not authorized Respondent to use its MORGAN STANLEY mark. The WHOIS information identifies the registrant of the disputed domain names as “Hong Chen a/k/a/ Hong Chen,” which is not similar to any of the disputed domain names. As Respondent has not rebutted any of the evidence in the record by failing to file a Response, the Panel concludes that Respondent is not commonly known by the <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <morganstanleycapitalgroup.com> domain name resolves to a website that features hyperlinks to Complainant’s competitors in the financial industry. Complainant alleges that Respondent most likely profits from the hyperlinks found on the resolving website. The Panel finds that Respondent’s competing use of this disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The <morganstanleyideas.com> and <morganstanleyinternational.com> domain names, on the other hand, resolve to websites containing hyperlinks to unrelated third-parties. Complainant alleges that Respondent most likely profits from these hyperlinks through the receipt of pay-per-click fees. Thus, the Panel holds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of these disputed domain names pursuant to Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant has conducted a reverse WHOIS search for Respondent and has discovered multiple domain names that Respondent has registered that allegedly contain third-party marks. As these other disputed domain names are not a part of this dispute and have not been analyzed in previous UDRP proceedings, the Panel finds that this evidence does not prove bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant makes no allegations under Policy ¶ 4(b)(iii), but the Panel chooses to analyze the evidence under this paragraph regardless. As Respondent’s <morganstanleycapitalgroup.com> domain name host hyperlinks to Complainant’s competitors, the Panel determines that Respondent registered and uses the disputed domain name in bad faith 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 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).”).
As noted previously, Respondent commercially benefits from the hyperlinks found on the websites resolving from the <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names. As the Panel has determined that the disputed domain names are confusingly similar to Complainant’s mark, the Panel finds that Respondent is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain names, which is a classic example of bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the MORGAN STANLEY mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds that Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds 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 <morganstanleycapitalgroup.com>, <morganstanleyideas.com>, and <morganstanleyinternational.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 17, 2011
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