Morgan Stanley v. chen mingyu
Claim Number: FA1110001410486
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is chen mingyu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyhuaxin.mobi>, registered with Hichina Zhicheng Technology Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2011; the National Arbitration Forum received payment on October 6, 2011. The Complaint was submitted in both Chinese and English.
On October 7, 2011, Hichina Zhicheng Technology Ltd confirmed by e-mail to the National Arbitration Forum that the <morganstanleyhuaxin.mobi> domain name is registered with Hichina Zhicheng Technology Ltd and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd 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 October 10, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 31, 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@morganstanleyhuaxin.mobi. Also on October 10, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
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 <morganstanleyhuaxin.mobi> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyhuaxin.mobi> domain name.
3. Respondent registered and used the <morganstanleyhuaxin.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers financial, investment, and wealth management services to a full range of clients through a combination of institution and retail capabilities. Complainant owns the MORGAN STANLEY mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992) and the Chinese State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 775,116 registered January 7, 1995).
Respondent, chen mingyu, registered the <morganstanleyhuaxin.mobi> domain name on September 7, 2011. The disputed domain name resolves to a Chinese website displaying unrelated information and links on topics, such as games, mobile phones, music, etc.
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.
Complainant owns the MORGAN STANLEY mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 registered August 11, 1992) and the Chinese State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 775,116 registered January 7, 1995). Panels in prior cases have found that registering a trademark with a country’s trademark authority, such as the USPTO or the SAIC, was sufficient to demonstrate rights and legitimate interests in a mark. 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 Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Administration for Industry and Commerce was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has conclusively demonstrated its rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <morganstanleyhuaxin.mobi> domain name is confusingly similar to Complainant’s mark because the disputed domain name only removes the space between the words of the mark and adds the Chinese term “huaxin,” which is the name of a securities company in China with which Complainant entered into a joint venture on June 10, 2011. The disputed domain name also appends the generic top-level domain (“gTLD”) “mobi.” In Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), and Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), past panels found that adding words that described Complainant’s business to a mark to form the disputed domain name did not create a distinct disputed domain name. Similarly, in Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007), the panel found that the addition of the gTLD “.mobi” was of no consequence and should be ignored. Finally, it has long been established that the removal of a space from a mark does not differentiate a disputed domain name. See 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)). The Panel accordingly concludes that Respondent’s <morganstanleyhuaxin.mobi> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights and legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also Towmaster, Inc. v . Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record against the Policy ¶ 4(c) factors to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant asserts that MORGAN STANLEY, Huaxin, and <morganstanleyhuaxin.mobi> are not part of Respondent’s name. Complainant also alleges that Respondent does not engage in any business under any of those names. Complainant contends that the WHOIS information names the registrant of the disputed domain name as “chen mingyu.” Complainant also argues that Respondent is not a licensee of Complainant and has never been authorized to register or use the MORGAN STANLEY mark in any way. As a result, the Panel finds that Respondent is not commonly known by the <morganstanleyhuaxin.mobi> 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 contends that Respondent’s <morganstanleyhuaxin.mobi> domain name resolves to a Chinese language website that contains hyperlinks unrelated to Complainant on topics such as games, mobile phones, etc. Complainant also asserts that the resolving website promotes Respondent’s own purported mobile Internet services by providing information on those services. Complainant argues that neither the display of unrelated hyperlinks nor the promotion of Respondent’s unrelated business qualifies as a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <morganstanleyhuaxin.mobi> domain name hosts hyperlinks to unrelated third parties. Complainant alleges that these links, which are presumably pay-per-click links, benefit Respondent in the form of click-through fees. Complainant also asserts that Respondent promotes its own mobile Internet services at the disputed domain name. Complainant contends that Respondent uses the confusingly similar disputed domain name to attract and mislead consumers in the hopes of creating greater traffic, and thus higher profits, at the disputed domain name. The Panel finds that these activities indicate bad faith registration and use pursuant to 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 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 asserts that Respondent registered the <morganstanleyhuaxin.mobi> domain name on September 7, 2011, shortly after the public announcement of the joint venture agreement between Complainant and the Chinese securities company, Huaxin, that was finalized on June 10, 2011. The Panel finds that the particular timing of Respondent’s registration of the disputed domain name and the fact that the disputed domain name is comprised of the names of these two companies support a finding of opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Complainant alleges that its long and well established reputation in the MORGAN STANLEY marks and its use of the mark in the financial and investment services industries throughout the world leaves no doubt that Respondent was aware of Complainant’s rights in the MORGAN STANLEY mark at the time it registered the <morganstanleyhuaxin.mobi> domain name. While the Panel concludes that constructive knowledge is generally insufficient to support a finding of bad faith under the Policy, the Panel finds sufficient evidence here to hold that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark when it registered the <morganstanleyhuaxin.mobi> domain name. Accordingly, the Panel finds bad faith under Policy ¶ 4(a)(iii). See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel finds Complainant has satisfied 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 <morganstanleyhuaxin.mobi> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 8, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page