Morgan Stanley v. cui liyan
Claim Number: FA1206001449767
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is cui liyan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleywealthmanagement.net>, registered with eName Technology Co., Ltd.
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 20, 2012; the National Arbitration Forum received payment on June 20, 2012. The Complaint was submitted in both English and Chinese.
On June 24, 2012, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <morganstanleywealthmanagement.net> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., 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 July 2, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 23, 2012 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@morganstanleywealthmanagement.net. Also on July 2, 2012, 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 July 31, 2012, 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 (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 <morganstanleywealthmanagement.net> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleywealthmanagement.net> domain name.
3. Respondent registered and used the <morganstanleywealthmanagement.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the MORGAN STANLEY mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 registered August 11, 1992) and the Chinese State Administration of Industry and Commerce (“SAIC”) (e.g., Reg. No. 607,507 registered August 20, 2002). Complainant uses the mark in connection with offering financial services.
Respondent registered the <morganstanleywealthmanagement.net> domain name on June 12, 2012. The disputed domain name resolves to an inactive website. Respondent offered to sell the disputed domain name for $1,200.
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."
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.
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.”).
Complainant uses its MORGAN STANLEY mark in connection with a full range of financial, investment, and wealth management services Complainant and owns trademark registrations with both the USPTO and SAIC. Therefore, the Panel finds that Complainant has rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <morganstanleywealthmanagement.net> domain name is confusingly similar to the MORGAN STANLEY mark. Respondent’s addition of the descriptive terms “wealth” and “management” fails to differentiate the disputed domain name from the mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel also finds that Respondent’s deletion of the space between words and addition of the generic top-level domain (“gTLD”) “.net” is irrelevant to a 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.”). Thus, the Panel finds that Respondent’s <morganstanleywealthmanagement.net> domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <morganstanleywealthmanagement.net> domain name. The WHOIS record for the disputed domain name lists “cui liyan” as the domain name registrant. Complainant argues that Respondent does not engage in any business or commerce under the “Morgan Stanley Wealth Management” name. Additionally, Respondent is not a licensee of Complainant, has not been authorized to use the MORGAN STANLEY mark, and has no relationship with Complainant. Therefore, the Panel finds that Respondent is not commonly known by the <morganstanleywealthmanagement.net> domain name under Policy ¶ 4(c)(ii). See 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 argues that Respondent lacks rights and legitimate interests in the <morganstanleywealthmanagement.net> domain name, since Respondent fails to actively use the domain name. Prior panels have found that the inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent’s non-use of the <morganstanleywealthmanagement.net> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent’s lack of rights and legitimate interests is further shown by Respondent’s offer to sell the disputed domain name to Complainant. Complainant asserts that Respondent, in response to a cease and desist letter, offered to sell the disputed domain name to Complainant for $1,200 which Complainant asserts must far exceed any conceivable administrative costs associated with the <morganstanleywealthmanagement.net> domain name. Therefore, the Panel agrees and finds that Respondent’s willingness to sell the disputed domain name is evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s offer to see the <morganstanleywealthmanagement.net> domain name for $1200 constitutes bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), where the panel held that the offer to sell a disputed domain name for an amount in excess of out-of-pocket costs indicates bad faith.
Respondent’s bad faith is further demonstrated by the lack of content associated with the <morganstanleywealthmanagement.net> domain name. The screenshots provided by Complainant show that when attempting to visit the <morganstanleywealthmanagement.net> domain name, the following language is displayed: “Sorry ‘www.morganstanleywealthmanagement.net’ does not exist or is not available.” Thus the Panel finds that Respondent’s registration and non-use of the <morganstanleywealthmanagement.net> domain name are a product of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Based on the addition of terms relevant to Complainant’s business, the Panel also finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and therefore finds bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that 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 <morganstanleywealthmanagement.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 7, 2012
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