Morgan Stanley v. TONY / shentony
Claim Number: FA1509001637186
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is TONY / shentony (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.online>, registered with Xin Net Technology Corporation.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2015; the Forum received payment on September 10, 2015. The Complaint was submitted in both Chinese and English.
On September 10, 2015, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <morganstanley.online> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 September 11, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 1, 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@morganstanley.online. Also on September 11, 2015, the Chinese language 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 October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it offers a full range of financial, investment and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. With over 1,000 offices in over 40 countries, including in the United States and China, Complainant offers truly global access to financial markets and advice. Complainant is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world. The marks were first used in1935 and are registered in numerous countries around the world, including the USA and China, with registrations dating back to 1992. The disputed domain name is identical to the MORGAN STANLEY mark: the domain name contains Complainant’s mark in full and attaches the top-level domain “.online” to the domain name. Complainant cites UDRP precedents to support it position
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has never authorized or licensed Respondent to use the MORGAN STANLEY trademark, nor use the mark as a domain name. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name does not resolve to an active website but merely times out when typed into the URL bar. Complainant cites UDRP precedents to support its position.
Complainant alleges that its marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. That is not a legitimate or bona fide use of a domain name. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent was aware of Complainant’s MORGAN STANLEY mark when it registered the disputed domain name. Further, Respondent’s disputed domain resolves to a blank or inactive page. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent did not submit a Response. However, he did engage in correspondence with Complainant, stating, in pertinent part:
“First, I should say I am not familiar with ‘MORGAN STANLEY’ company. The registration of ‘morganstanley.online’ is for personal purpose. I would rather to build it as a blog or space than to do anything which related with finance area.”
“Actually, ‘MORGANSTANLEY’ is just a name or phrase to our normal people, there are thousands of ‘Morgan’ and thousands of ‘Stanley’ in the world. If ‘MORGANSTANLEY’ is quite important to your client, and as you’ve descried, your client is a powerful and big company, why did not you register the Domain Name in the first place. It is a race between Tortoise and Rabbit. There is no reason for the rabbit to lose the match if he could treat the match seriously.”
Complainant owns the registered trademark MORGAN STANLEY, with rights dating back to 1992. The mark is registered in many countries, including China. The mark is well known and is used to market banking services around the world.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise granted permission to Respondent to use its mark
The disputed domain name is not being used
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.”).
Prior to dealing with the three substantive elements of the Policy, the panel must first deal with a procedural issue. The Registration Agreement is written in Chinese. Pursuant to Rule 11(a), the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In light of the fact that the domain name consists of a well-known mark based on English-language names and an English word (online), that the Complaint and Commencement Notification were served in Chinese, that Respondent did correspond with Complainant in English, and that Respondent did not reply formally, the Panel determines that the remainder of the proceedings shall be conducted in English.
The disputed domain name contains Complainant’s mark in full and attaches the top-level domain “.online” to the domain name. Prior panels have found that the addition of a top-level domain is irrelevant to the analysis of Policy ¶ 4(a)(i), and in the case of new top-level domains, their presence sometimes serves to enhance confusing similarity. See DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). The Panel concludes that the presence of the “.online” top-level domain extension increases the possibility of consumer confusion and it finds that that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the disputed domain name, and that it has never authorized or licensed Respondent to use its mark, nor to use the mark as a domain name. The WHOIS information for the disputed domain name refers to “TONY / shentony” as the registrant of record. Lacking any contentions from Respondent to contest these allegations, the Panel finds that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Indeed Respondent’s disputed domain name does not resolve to an active website. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Although Respondent did not submit a Response, he did provide some explanations in his correspondence with Complainant. Namely, Respondent alleges that he did not know about Complainant; that he registered the disputed domain name for personal purposes (to create a blog not related to finance); that Complainant’s mark is just a name, and many people are named Morgan or Stanley; and that the first-come-first served principle should apply to the present dispute.
The Panel is not convinced by these arguments. While it is true that many people are called Morgan or Stanley, that is not the case of Respondent. Respondent does not explain why he would choose those particular names to run a personal blog. Nor why he chose to register the name under the new gTLD “.online”, which gives the obvious connotation that it will deal with Morgan Stanley online. Nor does Respondent explain what sort of information he plans to post on his blog.
The first-come-first-served principle is indeed the fundamental rule governing domain name registrations, but the Policy was created specifically to deal with exceptions to that rule. Thus, the task of the Panel is to determine whether to overturn a first-come-first-served registration because it violates the Policy. As explained above and below, the Panel does find that Respondent has violated the Policy.
The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
As noted above, the Panel is not convinced by Respondent’s statements to the effect that he has rights or legitimate interests in the disputed domain name. Complainant’s marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. See Drexel University v. David Brouda, D2001-0067 (WIPO Mar. 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”); see also Viceroy Cayman Ltd. v. Next Reservation Ltd / Privacy Protection Service, Inc. d/b/a PrivacyProtect.org, D2014-0919 (WIPO July 28, 2014).
And the Panel finds that Respondent registered the disputed domain name in bad faith because, as explained below, it is difficult to envisage any use of the disputed domain name that would not violate the Policy. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”); Swarovski Aktiengesellschaft v. Michael Edwards, D2013-0779 (WIPO Nov. 19, 2013) (“In light of the global and longstanding use of the SWAROVSKI mark, including in Respondent’s home nation, it is only reasonable for the Panel to assume that, under the circumstances, the Respondent registered the disputed domain name to cash in on the fame of a well-known mark like SWAROVSKI. This circumstance alone is sufficient to prove bad faith registration of the disputed domain name.”).
Respondent is not using the disputed domain name. But this does not necessarily preclude a finding of bad faith use under the Policy. The guiding precedent is Telstra Corporation Limited v. Nuclear Marshmallows, D2000‑0003 (WIPO, Feb. 18, 2000). See also paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Although there are significant differences in the facts of the present case and the facts of the Telstra case, nevertheless the inferences made by the panel in the Telstra case do appear relevant for the present case. (The reasoning and wording below are directly derived from those of the Telstra case.)
In particular, this Panel, as did the Telstra panel, must determine whether, in the circumstances of this particular case, the passive holding of the disputed domain name by Respondent amounts to Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) Complainant’s trademark has a strong reputation and is widely known,
(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, an infringement of Complainant’s rights under trademark law, or a violation of paragraph 4(b)(iv) of the Policy.
In light of these particular circumstances, the Panel concludes that Respondent’s passive holding of the disputed domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name is being used in bad faith by Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley.online> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 10, 2014
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