Morgan Stanley v. yangshichao
Claim Number: FA1310001527026
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is yangshichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyservice.com>, registered with 35 Technology Co., 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2013; the National Arbitration Forum received payment on October 29, 2013. The Complaint was submitted in both Chinese and English.
On October 29, 2013, 35 Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <morganstanleyservice.com> domain name is registered with 35 Technology Co., Ltd and that Respondent is the current registrant of the name. 35 Technology Co., Ltd has verified that Respondent is bound by the 35 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 October 30, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 19, 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@morganstanleyservice.com. Also on October 30, 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 November 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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
A. Complainant
a. Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (e.g., Reg. No. 1,707,196, registered August 11, 1992). Complainant also owns trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the MORGAN STANLEY mark (e.g., Reg. No. 607,505, registered August 20, 1992).
c. Respondent’s <morganstanleyservice.com> domain name features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the descriptive or generic word “service.” The addition of the generic top-level domain (“gTLD”) “.com” and elimination of spaces are irrelevant in distinguishing the disputed domain name from Complainant’s mark.
d. Respondent should be considered as having no rights or legitimate interests in respect of the domain name.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent’s domain name does not resolve to any active website.
e. The domain name should be considered as having been registered and used in bad faith.
i. Respondent’s failure to make active use of the disputed domain name is further evidence of bad faith use and registration.
ii. Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time it registered the confusingly similar domain name. Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered its domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Morgan Stanley of New York, NY, USA. Complainant owns both domestic and international registrations for its mark MORGAN STANLEY and related marks. The MORGAN STANLEY family of marks is used in relation to Complainant’s financial, investment and wealth management services. Complainant has been using its MORGAN STANLEY mark continuously since at least as early as 1992 and Complainant uses the mark in connection with several websites in the cyber sphere including <morganstanley.com> and <morganstanley.net>.
Respondent is Yangshichao of Bejing, China. Respondent’s registrar’s address is listed as Xiamen Fujian, China. Respondent registered the <morganstanleyservice.com> domain name on or about October 18, 2013.
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 asserts that it offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant argues that it is the owner of trademark registrations with the USPTO for the MORGAN STANLEY mark (e.g., Reg. No. 1,707,196, registered August 11, 1992). See Exhibit 2. Complainant also contends that it owns trademark registrations with China’s SAIC for the MORGAN STANLEY mark (e.g., Reg. No. 607,505, registered August 20, 1992). See Exhibit 2. The Panel notes that Respondent appears to reside in China. The Panel finds that Complainant’s registration of the MORGAN STANLEY mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to 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 alleges that Respondent’s <morganstanleyservice.com> domain name features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the descriptive or generic word “service.” The Panel finds that Respondent’s addition of a descriptive or generic word does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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)).
Complainant asserts that Respondent’s addition of the gTLD “.com” and elimination of spaces are irrelevant in distinguishing the disputed domain name from Complainant’s mark. In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel found that “[e]limination 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).” The Panel here finds that Respondent’s omission of a space and addition of a gTLD is inconsequential to Policy ¶ 4(a)(i). The Panel finds that Respondent’s <morganstanleyservice.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by the <morganstanleyservice.com> domain name. Complainant claims that neither MORGAN STANLEY or <morganstanleyservice.com> are part of Respondent’s name, which according to WHOIS records is “yangshichao.” See Exhibit 3. Complainant asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY marks or the domain name <morganstanleyservice.com>. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. The Panel here finds that Respondent is not commonly known by the <morganstanleyservice.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s <morganstanleyservice.com> domain name does not resolve to any active website. The Panel notes that Respondent’s disputed domain name resolves to a webpage stating “Oops! Google Chrome could not find <morganstanleyservice.com>.” See Exhibit 4. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet his burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
The Panel notes that Complainant fails to identify any of the typical bad faith factors listed under Policy ¶ 4(b), however, the examples of bad faith in Policy ¶ 4(b) are intended to be illustrative, rather than exclusive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Accordingly, the Panel may find that other factors, such as failure to make an active use, can evidence bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent’s failure to make active use of the disputed domain name is further evidence of bad faith use and registration. The Panel again notes that Respondent’s disputed domain name resolves to a webpage stating “Oops! Google Chrome could not find <morganstanleyservice.com>.” See Exhibit 4. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that respondent’s [failure to make an active use] of the domain name satisfies the requirement of
¶ 4(a)(iii) of the Policy. The Panel here finds that Respondent’s failure to establish an active site for the disputed domain name supports a finding that Respondent registered and is using the <morganstanleyservice.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 4, 2013
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