Morgan Stanley v. Zhu Xumei
Claim Number: FA1404001554302
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Zhu Xumei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.com.co>, registered with GODADDY.COM, INC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2014; the National Arbitration Forum received payment on April 15, 2014.
On April16, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <morganstanley.com.co> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. 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 April 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2014 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.com.co. Also on April 17, 2014, 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 May 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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, 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.
ii. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (Reg. No. 1,707,196, registered August 11, 1992). Complainant also owns a MORGAN STANLEY mark through China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 775,116, registered January 7, 1995).
iii. The addition of the country-code top-level domain (“ccTLD”) and elimination of spaces are irrelevant in distinguishing the <morganstanley.com.co> domain name from Complainant’s MORGAN STANLEY mark.
iv. Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name.
v. Respondent is not commonly known by the disputed domain name.
vi. The disputed domain name automatically hyperlinks to various third-party businesses, some of which offer financial services that compete with Complainant’s services.
vii. The disputed domain name should be considered as having been registered and used in bad faith.
viii. The disputed domain name automatically hyperlinks to third-party websites, some of which offer financial services that compete with Complainant’s financial services.
ix. 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 the disputed domain name.
x. Respondent registered the <morganstanley.com.co> domain name on April 9, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <morganstanley.com.co> domain name, and that Respondent registered and uses 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.”).
PRELIMINARY ISSUE: UDRP Proceedings Concerning a Third-Level Domain
The Panel notes that the current <morganstanley.com.co> domain name includes a third-level domain, and would ordinarily fall outside of the UDRP’s default applicability to only second-level domains (e.g., UDRP proceedings allowed against <blackacre.com>, but not against <blackacre.brownacre.com>). However, as .CO Internet S.A.S., the registry administrating the “.co” top-level domain, has agreed to the application of the UDRP to its third-level domain names, such as the “.com.co” domain names, the Panel finds that the UDRP is applicable to this dispute.
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 is the owner of a trademark registration with the USPTO for the MORGAN STANLEY mark (Reg. No. 1,707,196, registered August 11, 1992). Complainant also owns a MORGAN STANLEY mark through China’s SAIC (Reg. No. 775,116, registered January 7, 1995). Id. Although Respondent appears to reside in China, Complainant’s registration of the MORGAN STANLEY mark with the USPTO and China’s SAIC sufficiently shows that it has rights in the 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).”).
Respondent uses Complainant’s MORGAN STANLEY mark in its entirety and merely removes the spaces in the mark and adds the generic top-level domain (“gTLD”) “.com.com.” Complainant argues that Respondent’s addition of the ccTLD and elimination of spaces are irrelevant in distinguishing the <morganstanley.com.co> domain name from Complainant’s MORGAN STANLEY mark. The Panel agrees that Respondent’s omission of spaces and addition of a gTLD does nothing to eliminate the confusion between Complainant’s mark and the disputed domain name. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). Thus, the Panel holds that Respondent’s <morganstanley.com.co> domain name is identical 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 holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the <morganstanley.com.co> domain name. Complainant argues that the WHOIS record states that the registrant of the disputed domain name is “Zhu Xumei.” Complainant further alleges that Respondent is not a licensee of Complainant, and that Respondent has never been authorized by Complainant to use the MORGAN STANLEY mark in a domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <morganstanley.com.co> domain name under 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 contends that Respondent’s <morganstanley.com.co> domain name automatically hyperlinks to various third-party businesses, some of which offer financial services that compete with Complainant’s services. Such use of the <morganstanley.com.co> 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. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s <morganstanley.com.co> domain name automatically hyperlinks to third-party websites, some of which offer financial services that compete with Complainant’s financial services. Such use disrupts Complainant’s business which is a bad faith use under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent’s <morganstanley.com.co> domain name automatically hyperlinks to third-party websites, some of which offer financial services that compete with Complainant’s financial services. Complainant argues that Respondent presumably receives a financial benefit from the disputed domain name in the form of click-through fees. The Panel l holds that Respondent is using the disputed domain name to provide competing links, which shows bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant claims that Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered the disputed domain name because of Complainant’s exclusive use of the MORGAN STANLEY mark in the financial and investment services industries throughout the world. The Panel finds that Respondent had actual knowledge of Complainant's MORGAN STANLEY mark and therefore finds that Respondent registered the <morganstanley.com.co> 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").
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 <morganstanley.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 23, 2014
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