Morgan Stanley v. Zhang Sheng Xu / Zhang Sheng Xu
Claim Number: FA1501001600534
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Zhang Sheng Xu / Zhang Sheng Xu (“Respondent”), Shen Zhen, Grenada .
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleychinanet.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2015; the National Arbitration Forum received payment on January 18, 2015.
On January 22, 2015, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the National Arbitration Forum that the <morganstanleychinanet.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 January 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2015 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@morganstanleychinanet.com. Also on January 23, 2015, 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 February 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions:
i. Complainant owns the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992).
ii. Complainant uses the mark in connection with the financial world.
iii. Complainant has made use of the MORGAN STANLEY mark worldwide and is a comprised of a family of well-known marks.
iv. Complainant’s online operation is directed through the <morganstanley.com> and <morganstanley.net> domain names as well as hundreds of variations thereof in the .com, .net, and other gTLDs and numerous similar country code domain name registrations, including <morganstanleychina.com>.
i. Policy ¶ 4(a)(i)
1. The <morganstanleychinanet.com> domain name is confusingly similar to the MORGAN STANLEY mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent has not been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
2. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to resemble an official Morgan Stanley website. The website utilizes the MORGAN STANLEY mark numerous times, speaks as if it were Complainant, and plagiarizes text from Complainant’s legitimate websites.
3. The disputed domain name invites consumers to enter personal and confidential information and an effort to “phish” for Internet users’ personal information.
iii. Policy ¶ 4(a)(iii)
1. Complainant has a long and well-established reputation in the MORGAN STANLEY marks through is exclusive use in the financial and investment services industries throughout the world. The disputed website falsely associates with and passes itself off as Morgan Stanley and thus violates Complainant’s intellectual property rights.
2. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark at the time the disputed domain name was registered.
3. Respondent is misleading users and taking advantage of Complainant’s well-known mark in bad faith as evidenced by its “phishing” efforts.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is the famous United States company engaged in the finance and related industries.
2. Complainant owns the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992).
3.Respondent registered the <morganstanleychinanet.com> domain name on January 14, 2015.
4. Respondent uses the disputed domain name to resemble an official Morgan Stanley website, plagiarize the contents of Complainant’s own website and to engage in phishing.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant uses the MORGAN STANLEY mark in connection with financial, investment, and wealth management services to a broad spectrum of clients worldwide. Complainant urges that it has exerted significant effort in promoting the MORGAN STANLEY mark such that it has garnered notoriety and consumer appeal. Further, Complainant’s online operation is directed through the <morganstanley.com> domain name as well as hundreds of variations thereof in the .com, .net, and other gTLDs and numerous similar country code domain name registrations. Complainant argues that it has established rights in the MORGAN STANLEY mark through its registration with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992). The Panel agrees that Complainant’s USPTO registration sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”)
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant argues the disputed domain name incorporates the MORGAN STANLEY mark in whole, and must be deemed identical or confusingly similar to Complainant’s registered MORGAN STANLEY mark. Complainant asserts Respondent’s <morganstanleychinanet.com> domain name features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the geographically descriptive word “China” and the generic term “net.” Complainant argues that the addition of these terms does not distinguish the resulting name from the MORGAN STANLEY mark. See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). Further, Complainant claims that the addition of a gTLD “.com” and elimination of spaces are irrelevant in distinguishing the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees that the <morganstanleychinanet.com> domain name is confusingly similar to the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i) as the domain name merely adds the geographically descriptive term “china” and the generic term “net,” along with the non-distinctive gTLD “.com.”
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MORGAN
STANLEY trademark and to use it in its domain name, making only the additions referred to above;
(b) Respondent uses the disputed domain name to resemble an official Morgan Stanley website, plagiarize the contents of Complainant’s own website and to engage in phishing;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant contends that neither the MORGAN STANLEY mark nor MORGANSTANLEYCHINANET.COM are part of Respondent’s name. Complainant adds that prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or MORGANSTANLEYCHINANET.COM, and Respondent was not commonly known by either of those names. The Panel notes that the WHOIS record lists “Zhang Sheng Xu” as registrant. Complainant also adds that Respondent has no relationship with Complainant and is not a licensee of Complainant and thus has no legitimate rights or interests in the MORGAN STANLEY mark through Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). In light of the available evidence, from which is notably absent any rebuttal from Respondent, the Panel concludes there is no basis to find Respondent commonly known by the disputed domain name as envisioned by Policy ¶ 4(c)(ii);
(e)Complainant further argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate purpose, contending that the <morganstanleychinanet.com> domain name purports to be an official Morgan Stanley website. See Comp., at Attached Ex. 4. Complainant asserts that the website seeks to “impersonate” Complainant and mislead consumers into mistakenly believing that Respondent’s website and purported financial services are somehow affiliated with or sponsored by Complainant. Consistent with prior UDRP decisions, the Panel determines that Respondent’s efforts to pass itself off as Complainant amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”);
(f)Complainant asserts that Respondent’s website invites unsuspecting consumers to enter personal and confidential information, such as names, telephone numbers, and bank account information into the web portal in dispute. See Comp., at Attached Ex. 4. Complainant further asserts that the use of a confusingly similar domain name that links to a website used to “phish” for Internet users’ personal information is not a legitimate purpose of bona fide offering of goods or services. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent’s apparent phishing attempt provides further indication that Respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that the <morganstanleychinanet.com> domain name seeks to suggest falsely that the website is maintained by, sponsored by, or affiliated with Complainant. The Panel recalls that the disputed domain name resolves to a website boasting the MORGAN STANLEY mark and displaying financial-related content and portals. See Compl., at Attached Ex. 4. Complainant alleges such false association to be evidence of bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using complainant’s famous marks and likeness); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). The Panel agrees that Respondent’s use of the disputed domain name to pass itself off as Complainant indicates bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, in arguing that Respondent is guilty of bad faith via “phishing,” Complainant makes the contention that Respondent uses the alleged confusingly similar <morganstanleychinanet.com> domain name to encourage Internet users to disclose personal information. See Compl., at Attached Ex. 4. The Panel agrees that Respondent’s use of the disputed domain name in furtherance of a phishing scheme constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
Thirdly, Complainant asserts that Respondent had at least constructive knowledge of the MORGAN STANLEY mark. Complainant reasons that because the MORGAN STANLEY mark is well known and registered in many countries throughout the world, including the United States and China, it is not illogical to make that presumption. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. For example, in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), the panel wrote, “[a]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” At present, the Panel notes that Respondent’s website features the MORGAN STANLEY mark as a header and purports to offer services relating to Complainant’s financial offerings. See Compl., at Attached Ex. 4. Given these circumstances, the Panel infers that Respondent had actual knowledge of Complainant and its rights in the MORGAN STANLEY mark at the time Respondent registered the <morganstanleychinanet.com> domain name; therefore, the Panel finds evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MORGAN STANLEY mark and in view of its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleychinanet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 26, 2015
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