Morgan Stanley v. Whois Agent c/o Domain Whois Protection Service
Claim Number: FA1302001483974
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Whois Agent c/o Domain Whois Protection Service (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyllc.net>, registered with HiChina Zhicheng Technology Limited.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2013; the National Arbitration Forum received payment on February 7, 2013. The Complaint was submitted in both English and Chinese.
On February 7, 2013, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <morganstanleyllc.net> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 February 8, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 28, 2013 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@morganstanleyllc.net. Also on February 8, 2013, 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 March 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
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.
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 name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Rights / Domain Name’s Confusing Similarity
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain name
Policy ¶ 4(a)(iii): Respondent’s bad faith use and registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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 claims that it has rights for the MORGAN STANLEY mark by way of USPTO registration of the mark. See Reg. No. 1,707,196 registered on Aug. 11, 1992. Complainant also notes that it has registered the trademark with the SAIC. See Reg. No. 775,116 registered on Jan. 7, 1995. The Panel agrees that registration of the domain name in multiple jurisdictions, including Respondent’s own jurisdiction, is compelling evidence of Complainant’s rights under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant next argues that Respondent’s domain name is confusingly similar to the MORGAN STANLEY mark. Complainant duly notes that Respondent has merely added the generic initials “llc,” the gTLD “.net,” and has removed the spacing from the MORGAN STANLEY mark in forming the domain name. The Panel agrees that there is nothing at all distinctive about the adhering to conventions of Internet domain registration requiring the addition of a TLD and a lack of spacing in domains. 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.”). The Panel further agrees that adding the generic business designation “llc” to this domain does nothing but solidify the domain name’s confusing similarity under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity).
Complainant has proven this element.
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. 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. Complainant satisfies its burden, and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has never had the <morganstanleyllc.net> domain name as a part of its name. Complainant attests that it has not licensed or in anyway authorized Respondent’s use of the MORGAN STANLEY mark in domain names. The Panel notes that the WHOIS information lists “WHOIS AGENT” as the registrant of the domain. The Panel agrees that in the absence of affirmative evidence connecting Respondent by name to the <morganstanleyllc.net> domain name, Respondent simply cannot be commonly known as the domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further proclaims that Respondent is not providing a bona fide offering of goods or services, or a legitimate noncommercial or fair use through the <morganstanleyllc.net> domain name. Complainant claims that each time an Internet user enters the disputed domain name into their browser, their browser times out and fails to produce a webpage. Complainant claims that this passive holding of the domain name is not a sufficient use. Previous panels have held that a respondent does not have a bona fide offering of goods or services when it fails to make any active use of the domain name. 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 domain name is a clear failure to provide a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
The Panel notes that while Complainant makes no arguments under Policy ¶ 4(b), this is an acceptable decision because the Policy ¶ 4(b) list is a non-exclusive set of examples of bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Complainant argues that Respondent’s failure to make an active use of the domain name is in itself evidence of bad faith use and registration. The Panel again notes that Complainant offers no evidence as to the domain name’s content because allegedly there is nothing to be seen as the user’s web browser simply times out. Previous panels have held that in some circumstances, usually when a duration of time has elapsed between registration and the bringing of the dispute, a respondent’s inactive use of a domain name can in itself establish bad faith use and registration. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Therefore the Panel agrees that Respondent has been inactively holding onto this domain name in bad faith, and it finds Policy ¶ 4(a)(iii) bad faith use and registration.
Complainant contends that Respondent had knowledge of Complainant’s rights in the MORGAN STANLEY mark. Complainant believes that this is true because of the international fame of the MORGAN STANLEY mark in the provision of financial services, along with Respondent’s decision to register a domain name embodying the mark, incur the fees associated with holding such a domain name, yet making no use at all of the domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyllc.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 20, 2013
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