Morgan Stanley v. Xu XuLiang / XuXuLiang
Claim Number: FA1506001626143
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Xu XuLiang / XuXuLiang (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--riqv9gi8ghlnpte.biz>, registered with Todaynic.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2015; the Forum received payment on June 25, 2015.
On July 6, 2015, Todaynic.com, Inc. confirmed by e-mail to the Forum that the <xn--riqv9gi8ghlnpte.biz> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.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 July 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@xn--riqv9gi8ghlnpte.biz. Also on July 7, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant
Complainant owns a registration for the MORGAN STANLEY trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Complainant also owns a trademark registration with China’s State Administration for Industry and Commerce (“SAIC”) for the Chinese character mark 摩根士丹利 (e.g., Reg. No. 3,069,699, registered June 14, 2003), which is the Chinese translation of the MORGAN STANLEY trademark. The mark is used in connection with the provision of financial, investment, and wealth management services. The <xn--riqv9gi8ghlnpte.biz> domain name is identical to the Chinese character mark 摩根士丹利 because the “xn--riqv9gi8ghlnpte” portion of the disputed domain name is the Punycode version of the 摩根士丹利 mark, and the only difference between the domain name and the mark is the affixation of the generic top-level domain (“gTLD”) “.biz.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a blank webpage, which shows that Respondent is not actively using the domain name.
Respondent has engaged in bad faith registration and use. Respondent’s failure to use the domain name demonstrates bad faith, as does Respondent’s actual knowledge of Complainant’s trademark rights.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <xn--riqv9gi8ghlnpte.biz> domain name.
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 owns a registration for the MORGAN STANLEY trademark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Complainant also owns a trademark registration with the SAIC for the Chinese character mark 摩根士丹利 (e.g., Reg. No. 3,069,699, registered June 14, 2003), which is the Chinese translation of the MORGAN STANLEY trademark. The mark is used on or in connection with the provision of financial, investment, and wealth management services. The Panel finds that registration with the USPTO and SAIC are both sufficient to establish rights in the MORGAN STANLEY and 摩根士丹利 marks, even though Respondent operates in a different country. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <xn--riqv9gi8ghlnpte.biz> domain name is identical to the Chinese character mark 摩根士丹利. Complainant notes that the “xn--riqv9gi8ghlnpte” portion of the disputed domain name is the Punycode version of the 摩根士丹利 mark. The only difference between the domain name and the mark is the affixation of the gTLD “.biz.” As a general rule, the addition of a gTLD cannot distinguish the domain name from the mark at issue. 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). Therefore, the Panel finds that the <xn--riqv9gi8ghlnpte.biz> domain name is identical to the Chinese character mark 摩根士丹利.
Complainant has proved this element.
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.”).
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the Chinese character mark 摩根士丹利 in domain names. “Xu XuLiang” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel therefore finds Complainant is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is not actively using the domain name as the domain name resolves to a blank webpage. Past panels have found a respondent does not have rights under Policy ¶¶ 4(c)(i) and (iii) where the respondent was not making active use of the domain name at issue. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”). The Panel finds that Respondent is not actively using the domain name, and finds Respondent does not have rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
While Complainant does not make contentions that fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(a)(iii) by failing to actively use the disputed domain name. Past panels have found bad faith where the respondent has not actively used the domain name in dispute. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). The Panel finds that Respondent has failed to actively use the domain name, and finds bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Complainant argues that Respondent must have had actual knowledge of Complainant's rights in the Chinese character mark 摩根士丹利 prior to registration of the <xn--riqv9gi8ghlnpte.biz> domain name because of Complainant's widespread use of the mark, the fame the mark has acquired in the industry, and Complainant’s trademark registrations with the USPTO and SAIC. The Panel concludes that Respondent had actual notice of Complainant's mark, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <xn--riqv9gi8ghlnpte.biz> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 6, 2015
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