national arbitration forum

URS DEFAULT DETERMINATION

 

Morgan Stanley v. 徐旭亮 徐旭亮

Claim Number: FA1412001595427

 

DOMAIN NAME

<morganstanley.网址>

 

PARTIES

Complainant:  Morgan Stanley of New York, New York, United States of America.

Complainant Representative: Cowan, Liebowitz & Latman, P.C. of New York, New York, United States of America.

 

Respondent:  徐旭亮 徐旭亮 of 未知, 未知, International, CN.

Respondent Representative: 

 

REGISTRIES and REGISTRARS

Registries:  网址 Registry

Registrars:  Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS)

 

EXAMINER

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.

 

Fernando Triana, Esq., as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: December 16, 2014

Commencement: December 18, 2014   

Default Date: January 5, 2015

 

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

 

• Complainant is the owner of the trademark MORGAN STANLEY in the United States in international classes 9, 16 and 36.

 

·        The disputed domain name <morganstanley.网址> fully incorporates Complainant’s trademark MORGAN STANLEY, and therefore, it is identical to said trademark.

 

• Respondent registered and is using the disputed domain name <morganstanley.网址> in bad faith.

 

• Respondent has no rights or legitimate interest in the disputed domain <morganstanley.网址>.

 

As per Paragraph 9 (c) of the URS Rules, English is the language of the Determination given the absence of a Response.

 

Pursuant to Paragraphs 6.1 and 6.3 of the URS Procedure, the Complaint proceeded to Default since Respondent did not submit a response to the Complaint. Thus, the Examiner will review the case on the merits of the claim.

 

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:

1. That the registered domain name is identical or confusingly similar to a word mark;

2. That the Registrant has no legitimate right or interest to the domain name; and

3. That the domain was registered and is being used in bad faith.

 

1.      Identical and/or Confusingly Similar

 

Paragraph 1.2.6.1. of the URS Procedure requires the disputed domain name to be identical or confusingly similar to a word mark:

 

(i)           for which 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.

 

Use of said trademark could be shown by:

 

(i)         Demonstrating evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse.

(ii)        Providing a sample of use submitted directly with the URS Complaint”.

 

a)        Existence of a trademark in which the Complainant has rights and is in current use.

 

Complainant proved its rights on the trademark MORGAN STANLEY in the United States of America since at least 2014, when the USPTO granted its registration in the international classes 9 an 16.  

 

The Examiner reviewed the evidence submitted by Complainant intended to prove its rights on the trademark MORGAN STANLEY in the United States of America to identify services comprised in the international class 36. Although the USPTO certificate No. 1,707,196 submitted along with the Complaint states that the owner of the MORGAN STANTLEY trademark in international class 36 is MORGAN STANLEY GROUP, INC., a corporation different from the one identified as Complainant in the Complaint form, the Examiner confirmed ex officio in the USPTO’s online database that this trademark is currently registered in the name of MORGAN STANLEY, corporate name that coincides with the one of Complainant. In addition, the Examiner verified that this trademark has been renewed and will remain valid until 2022. Therefore, Complainant also proved its rights on the trademark MORGAN STANLEY in the United States of America since at least 1992, when the USPTO granted its registration in the international class 36.  

 

Complainant failed to prove its rights on the trademark MORGAN STANLEY in the People’s Republic of China. The following evidence was submitted:

 

TRADEMARK AND REGISTRATION NUMBER	CURRENT OWNER*[1]	VALIDITY DATE**[2]	INTERNATIONAL CLASS.
MORGAN STANLEY 775116	MORGAN STANLEY DEAN WITTER & CO.	06/01/2015	36
MORGAN STANLEY 607509	MORGAN STANLEY DEAN WITTER & CO.	19/08/2012	16
MORGAN STANLEY 3069913	MORGAN STANLEY DEAN WITTER & CO.	20/05/2013	36
MORGAN STANLEY 3069699	MORGAN STANLEY	13/06/2013	16

 

As shown, the trademarks are either registered in the name of a corporation whose name does not coincide with the one of Complainant, or are not valid. The Examiner could not confirm Complainant’s ownership on the trademark MORGAN STANELY its validity in the Chinese Trademark Office’s[3] online database as he did in the USPTO’s online database

 

However, the registration of the trademark MORGAN STANLEY in the United States of America suffices for the purposes of the URS Procedure. This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and of the exclusive right to use it in connection with the corresponding goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[4].

 

Furthermore, Complainant filed printouts of the websites www.morganstanley.com and www.morganstanleychina.com in order to prove Complainant’s use of the trademark MORGAN STANLEY. The Examiner deems such printouts as valid evidence of said use.

 

Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is currently in use for purposes of Paragraph 1.2.6.1. of the URS Procedure.

 

b)      Identity or confusing similarity between the disputed domain name and the Complainant’s trademark.

 

The Examiner notes that the trademark MORGAN STANLEY is completely incorporated in the disputed domain name <morganstanley.网址>. 

 

The Examiner also notes that the disputed domain name <morganstanley.网址>is exclusively made up of the trademark MORGAN STANLEY, since it does not include any other word or number. These facts lead to the obvious conclusion that the disputed domain name <morganstanley.网址> is identical to the trademark MORGAN STANLEY.

 

Thus, by registering the disputed domain name, Respondent created a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

 

As per this reasoning, the Examiner finds that the disputed domain name <morganstanley.网址> is identical to Complainant’s trademark MORGAN STANLEY, and thus the requirement set forth in Paragraph 1.2.6.1. of the URS Procedure is duly complied with.

 

2.        Registration and Use in Bad Faith

 

Paragraph 1.2.6.3. of the URS Procedure includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:

 

a.    Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or

 

b.    Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

c.    Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

 

d.    By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on that web site or location.

 

Complainant asserts that Respondent was aware of its trademark MORGAN STANLEY at the time of the disputed domain name’s registration: Not only the trademark MORGAN STANLEY is well-known due to its extensive use by Complainant in the financial industry throughout the world; Respondent also received a notification that the disputed domain name <morganstanley.网址> matched a trademark registered with the Trademark Clearinghouse, when he was registering said domain name.  Respondent deliberately chose and registered the disputed domain name <morganstanley.网址> because it is confusingly similar to the trademark MORGAN STANLEY, intending to attract mislead consumers to his website. Yet, at the filing of the Complaint, Respondent’s website was not active.

 

Complainant asserts having sent a demand letter on December 4, 2014 to Respondent, who has not yet responded to it. However, Complainant did not submit evidence of said letter.

 

The Examiner concurs with Complainant’s assertions. If Respondent was not aware of the trademark MORGAN STANLEY’s existence and use before the registration of the disputed domain name, he definitely became aware of it at the time of its registration because of the Trademark notification provided by the Registry Operator[5].  Thus, in the Examiner’s view, Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it.  The Examiner deems that the mere fact of knowingly using a third-party’s trademark in a domain name is registration in bad faith[6].

 

In addition, the Examiner believes that registration of a domain name in bad faith necessarily leads to use in bad faith. Thus it is irrelevant whether Respondent is actively or passively using the disputed domain name; said use whatever its nature can only be deemed in bad faith. Thus, the Examiner concludes that Respondent is using the disputed domain name <morganstanley.网址> in bad faith.

 

As per this reasoning, the Examiner finds that the disputed domain name <morganstanley.网址> was registered and is being used in bad faith; thus the requirement set forth in Paragraph 1.2.6.3., of the URS Procedure is duly complied with.

 

3.        Rights or Legitimate Interests

 

In Paragraph 8.3, the URS Procedure clarifies Complainant’s burden of proof regarding the second element established in its Paragraph 1.2.6 (i.e. Registrant has no legitimate right or interest to the disputed domain name).

 

In a URS procedure, Complainant’s burden of proof regarding Registrant’s lack of rights or legitimate interest in the disputed domain name is met when Complainant presents adequate evidence to substantiate its trademark rights in the disputed domain name, e.g. evidence of a trademark registration and evidence of the disputed domain name’s registration and use in bad faith.

 

Complainant has met its burden of proof in this case regarding Registrant’s lack of rights or legitimate interest in the disputed domain name. As concluded above, Complainant has successfully shown evidence to substantiate its trademark rights, i.e. printouts from the USPTO trademark’s database proving that Complainant owns the registrations Nos. 4,470,389 and 1,707,196 in the United States of America for the trademark MORGAN STANLEY in international classes 9, 16 and 36, respectively.  In addition, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.

 

Consequently, the Examiner finds that in the present case, Respondent has no legitimate right or interest to the disputed domain name; thus the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.

 

DETERMINATION

After reviewing the Complainant’s 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 be SUSPENDED for the duration of the registration.

<morganstanley.网址>

Fernando Triana, Esq., Examiner

Dated:  January 8, 2015