Morgan Stanley v. john chen
Claim Number: FA1306001502938
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is john chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-china.com>, registered with GODADDY.COM, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2013; the National Arbitration Forum received payment on June 3, 2013.
On Jun 03, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <morganstanley-china.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 June 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@morganstanley-china.com. Also on June 4, 2013, the 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 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the MORGAN STANLEY mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 registered on August 11, 1992).
ii. Complainant owns the MORGAN STANLEY mark through its trademark registration with the State Administration for Industry and Commerce of the People’s Republic of China (“SAIC”) (e.g., Reg. No. 607,505 registered on August 20, 1992).
iii. Complainant uses the MORGAN STANLEY mark to promote a range of financial, investment, and wealth management services.
i. Policy ¶ 4 (a)(i)
1. The disputed domain name <morganstanley-china.com>, is confusingly similar to Complainant’s MORGAN STANLEY mark as it is comprised of Complainant’s mark with the mere addition of the geographically descriptive word “china,” a hyphen, and “.com,” plus the deletion of the space between Complainant’s two word mark.
ii. Policy ¶ 4 (a)(ii)
1. Respondent is not commonly known by the disputed domain name as revealed by the WHOIS information. Further, Complainant has not licensed or otherwise authorized Respondent to use the mark at issue.
2. Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The disputed domain name resolves to a parking website, which contains advertisements for the registrar of the disputed domain.
iii. Policy ¶ 4 (a)(iii)
1. The disputed domain name resolves to a parking website that provides advertisements for the registrar of the disputed domain name.
2. Respondent’s bad faith is evidenced by their use of the MORGAN STANLEY mark to create confusion and subsequently capitalize on the confusion to attract users to its site.
3. Respondent fails to make active use of the disputed domain name.
4. Respondent had actual and/or constructive knowledge of Complainant’s marks at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its MORGAN STANLEY mark.
2. Respondent’s <morganstanley-china.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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 to own the MORGAN STANLEY mark through its trademark registration with the USPTO (Reg. No. 1,707,196 registered on August 11, 1992). Complainant also claims to own the MORGAN STANLEY mark through its trademark registration with China’s SAIC (e.g., Reg. No. 607,505 registered on August 20, 1992). The Panel finds that Complainant’s USPTO and SAIC registrations establish its right in the MORGAN STANLEY mark under Policy ¶ 4(a)(i). See 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).”).
Complainant contends the disputed domain name <morganstanley-china.com> is confusingly similar to Complainant’s MORGAN STANLEY mark as it is comprised of Complainant’s mark in its entirety with the mere addition of the geographically descriptive word “china,” a hyphen, and “.com.” Complainant argues that such additions do not sufficiently distinguish <morganstanley-china.com> from MORGAN STANLEY for the purposes of the confusingly similar analysis. The Panel finds that the disputed domain name and the mark at issue are confusingly similar under Policy ¶ 4(a)(i) despite the additions of the geographically descriptive word “china,” a hyphen, and the top-level domain “.com,” as well as the deletion of the space between the two word mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
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. 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 Respondent is not commonly known by the disputed domain name as revealed by the WHOIS information. Further, Complainant has not licensed or otherwise authorized Respondent to use the mark at issue. As such, the Panel determines that Respondent is not commonly known by <morganstanley-china.com> pursuant to Policy ¶ 4(c)(ii). See 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 argues Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complaisant contends the disputed domain name resolves to a parking website, which contains advertisements for the registrar of the disputed domain. The Panel notes that Complainant provides evidence showing that the disputed domain name resolves to a website that displays advertisements for website-building, business e-mail addresses, and online bookkeeping. See Complainant’s Exhibit 4. The Panel finds that using the <morganstanley-china.com> domain name to display advertisements wholly unrelated to Complainant does not constitute a bona fide offering under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
Complainant contends the disputed domain name resolves to a parking website that provides advertisements for the registrar of the disputed domain name. Complainant argues that such use is evidence of bad faith. The Panel finds evidence of bad faith under Policy ¶ 4(b)(iii) where the disputed domain resolves to a parked website providing advertisements for the registrar. See Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page).
Complainant contends Respondent’s bad faith is further evidenced by their use of the MORGAN STANLEY mark to create confusion as to the source of the domain name and subsequently capitalize on the confusion to attract users to their site. The Panel finds that the creation of such confusion in order to attract Internet users and generate commercial profit to be evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant argues that Respondent fails to make active use of the disputed domain name. The Panel notes that Complainant asserts the disputed domain name resolves to a parked website with advertisements for the registrar. The Panel observes that the resolving webpage displays advertising content. The Panel finds such use to be inactive. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Complainant contends Respondent had actual and/or constructive knowledge of Complainant’s marks at the time it registered to disputed domain name. Although previous panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley-china.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr. , Panelist
Dated: July 15, 2013
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