Morgan Stanley v. yang yi

NATIONAL ARBITRATION FORUM
URS DEFAULT DETERMINATION

Morgan Stanley v. yang yi
Claim Number: FA1409001582246

DOMAIN NAME

<morganstanley.xyz>

PARTIES

	Complainant: Morgan Stanley of New York, NY, United States of America
	Complainant Representative: Cowan, Liebowitz & Latman, P.C. Eric J. Shimanoff of New York, NY, United States of America

	Respondent: yang yi yang yi of suzhoushi, II, CN

REGISTRIES and REGISTRARS

	Registries: XYZ.COM LLC
	Registrars: Xin Net Technology Corp.

EXAMINER

	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 Examiner in this proceeding.
	Vali Sakellarides, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: September 29, 2014
	Commencement: September 29, 2014
	Default Date: October 15, 2014
	Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

	Procedural Findings:
		Multiple Complainants: This proceeding features a sole Complainant regarding the single domain name <morganstanley.xyz>. No domain names are dismissed from this complaint.
		Multiple Respondents: This proceeding features a sole Respondent regarding the single domain name <morganstanley.xyz>. No domain names are dismissed from this complaint.

Findings of Fact: Complainant is Morgan Stanley, a company incorporated in USA. Complainant is the owner of numerous marks containing or comprising MORGAN STANLEY. Complainant with its affiliates and predecessors-in-interest have used the MORGAN STANLEY marks in connection with various financial and related services since at least as early as 1935, and the marks remain in use worldwide today, including in China. Complainant asserts that as a result of extensive use, promotion and advertisement, the MORGAN STANLEY family of marks are some of the most famous marks in the financial world and source of significant goodwill for Complainant. Respondent’s domain name incorporates Complainant’s MORGAN STANLEY mark in full. The elimination of spaces and the addition of the gTLD “.xyz” do nothing to distinguish Respondent’s domain name from Complainant’s mark.

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

Complainant owns registrations of the MORGAN STANLEY marks all over the world, among which U.S. registrations Nos. 1,707,196 and 4,470,389, Chinese registrations Nos. 3,069,699, 3,069,913, 775,116 and 607,509. Complainant provides evidence of USA and Chinese trademark registrations. Examiner finds that the disputed domain name <morganstanley.xyz> is identical to the Complainant’s MORGAN STANLEY trademark, as the gTLD .xyz is nor relevant for a finding under URS 1.2.6.1. Complainant provides evidence of current use of MORGAN STANLEY trademark globally through its web site www.morganstanley.com. Complainant also provides evidence of current use of MORGAN STANLEY trademark in China through its Chinese web site www.morganstanleychina.com. Examiner finds that Complainant has proved the first element under URS 1.2.6.1 (i).

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Respondent has not filed a Response. Complainant has not authorized Respondent to use its registered MORGAN STANLEY trademark. Examiner finds that the Complainant has established that the Respondent has no rights or legitimate interests in <morganstanley.xyz>.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

Complainant submits evidence that the domain name <morganstanley.xyz> does not resolve to an active website. The passive holding of a domain name can constitute bad faith registration and use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. (See e.g., Telstra Corporation Ltd. v. Nuclear Mashmallows, WIPO Case No. D2000-0003; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Liu.Jo S.p.A. v. Martina Hamsikova, WIPO Case No. D2013-1261). In the present case, Respondent is passively holding the disputed domain name and failed to respond to the complaint in accordance with the Rules. It is inconceivable to this Examiner that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name which is identical to MORGAN STANLEY trademark. Examiner finds that the Complainant has established the element under URS 1.2.6.3.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

morganstanley.xyz

Vali Sakellarides
Examiner
Dated: October 20, 2014

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