Morgan Stanley v. zhao lanfa
Claim Number: FA1508001634107
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is zhao lanfa (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleychina.co>, registered with GoDaddy.com, LLC.
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 Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2015; the Forum received payment on August 19, 2015.
On Aug 19, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleychina.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@morganstanleychina.co. Also on August 20, 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 September 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
A. Complainant
Complainant owns the MORGAN STANLEY mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). Complainant uses the MORGAN STANLEY mark in connection with its business in a full range of financial, investment and wealth management services.
Complainant alleges that the <morganstanleychina.co> domain name is confusingly similar to the MORGAN STANLEY mark, as Respondent has simply attached the geographic term “China” to the mark, removed the spaces between the words of the mark and attached the country code top-level domain (“ccTLD”) “.co.” Such changes are irrelevant to a Policy ¶ 4(a)(i) analysis.
Complainant also alleges that the Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain name, as demonstrated by the available WHOIS information for the disputed domain name. Respondent has neither been licensed nor authorized to use the MORGAN STANLEY mark. Additionally, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent uses the disputed domain name to resolve to a website that offers gambling services.
Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent uses the disputed domain to redirect Internet users to a gambling website, through which it presumably profits. Such behavior demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). Finally, due to Complainant’s long and well established reputation in the MORGAN STANLEY marks, there is no doubt that Respondent had actual knowledge of Complainant and its rights in the MORGAN STANLEY mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on July 31, 2015.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the undisputed and reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the famous and registered trademark of the Complainant, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed 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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s famous mark, MORGAN STANLEY. Complainant has adequately made out its case that it has legitimate rights in or to the trademark. See, USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY mark, as Respondent has simply attached the geographic term “China” to the mark, removed spaced between the words of the mark and attached the ccTLD “.co.” The Panel agrees. The disputed domain name is confusingly similar to the Complainant’s famous trademark.
The attachment of a geographic term does not remove a disputed domain name from the realm of confusing similarity. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part).
As such, the Panel finds that the <morganstanleychina.co> domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name, as evidenced by the available WHOIS information. Respondent is not licensed or authorized to use the MORGAN STANLEY mark. The WHOIS information lists “zhao lanfa” as registrant of the disputed domain name. Respondent has failed to present any evidence to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii).
Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent appears to use the disputed domain name to intentionally redirect Internet users to its own website, which appears to be a gambling website. See Compl., at Attached Ex. 4. Such conduct is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name.
Accordingly, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively and, therefore, has no rights or legitimate interests in or to the disputed domain name.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Respondent appears to use the disputed domain name to intentionally redirect Internet users to its own website for its own commercial gain. See Compl., at Attached Ex. 4. Such actions evince that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). As such, the Respondent has acted in bad faith under Policy ¶ 4(b)(iv). See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked the domain name <marssmusic.com>, which is identical to the complainant’s mark, to a gambling website).
Finally, Complainant believes that due to its numerous trademark registrations and its long and well established reputation in the financial industry around the world, it is inconceivable that Respondent registered the disputed domain name without constructive and/or actual knowledge of Complainant and its rights in the MORGAN STANLEY mark. Although the Panel dismisses claims of constructive notice as irrelevant, the Panel agrees with Complainant, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. As such, the Panel finds adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <morganstanleychina.co> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: September 21, 2015
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