Morgan Stanley v. wangshuxiang / wang
Claim Number: FA1509001637751
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is wangshuxiang / wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyiq.cc>, registered with Hangzhou AiMing Network Co., LTD.
The undersigned certifies that she acted independently and that to her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically September 15, 2015; the Forum received payment September 15, 2015. The Complaint was received in both Chinese and English.
On September 15, 2015, Hangzhou AiMing Network Co., LTD confirmed by e-mail to the Forum that the <morganstanleyiq.cc> domain name is registered with Hangzhou AiMing Network Co., LTD and that Respondent is the current registrant of the name. Hangzhou AiMing Network Co., LTD verified that Respondent is bound by the Hangzhou AiMing Network Co., LTD registration agreement and 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 16, 2015, the Forum served the Chinese Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of October 6, 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@morganstanleyiq.cc. Also on September 16, 2015, the Chinese 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 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions In this Proceeding:
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 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. The disputed domain name is confusingly similar to the MORGAN STANLEY mark, because Respondent simply removed the spaces between the words of the mark, attached the letters “iq” and the country-code top-level domain (“ccTLD”) “.cc.”
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as demonstrated by the available WHOIS information for the disputed domain name. Further, Respondent failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. in that when Internet users type the disputed domain name into the URL bar, it simply “times out”.
Respondent registered and is using the disputed domain name in bad faith. Due to the long and well-established reputation of the MORGAN STANLEY marks throughout the world, there can be no doubt that Respondent had actual knowledge and/or constructive knowledge of Complainant’s rights in the mark when registering the disputed domain name. Further in support, Respondent failed to make any active use of the disputed domain name, which also supports findings of bad faith by passive holding.
Respondent’s Allegation in this Proceeding:
Respondent failed to provide a Response in this matter. The Panel notes that Respondent registered the disputed domain name September 4, 2015.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. After review of the applicable rules on language of the proceedings under the UDRP, the Panel notes:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The Panel finds that Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark contained within the disputed domain name.
Respondent registered a confusingly similar domain name using Complainant’s protected mark.
Respondent registered and passively held the disputed domain name in bad faith.
DISCUSSION
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."
(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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the MORGAN STANLEY mark in connection with 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. Complainant owns the MORGAN STANLEY mark through its numerous trademark registrations around the world, including with the USPTO (e.g., Reg. No. 1,707,196, registered August 11,1992). The Panel agrees that Complainant established rights in the mark under Policy ¶ 4(a)(i). 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.”).
Complainant argues that the disputed domain name is confusingly similar to the MORGAN STANLEY mark because Respondent simply removed the spaces between the words of the mark, attached the letters “iq” and the ccTLD “.cc.” Previous panels have found that such changes do not remove a disputed domain name from the realm of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that 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 contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name. Complainant points to the available WHOIS information for the disputed domain name, which lists “wangshuxiang wang” as registrant of the disputed domain name. Further, Complainant notes that it has not licensed or authorized Respondent to use the MORGAN STANLEY mark. The Panel recalls that Respondent failed to submit a Response in this proceeding and no evidence refutes 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 pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Next, Complainant argues that Respondent failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant notes that Respondent failed to make any active use of the disputed domain name. Complainant posits that when typing in the disputed domain name into the URL bar, the website merely ‘times out”. Complainant argues that such use is not consistent with a bona fide offering of goods or services, and it is not a legitimate noncommercial or fair use of the disputed domain name. Previous panels have agreed with a similar argument. 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).”). For these reasons the Panel finds that Respondent’s apparent failure to make an active use of the disputed domain name is not 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.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
The Panel agrees that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use, or passive holding, and registration in some manner. 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). In other words, the Panel is entitled to look to the totality of the circumstances is making findings of bad faith use and registration.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. First, Complainant argues that because Complainant has built such a long and well-established reputation under the MORGAN STANLEY mark, it is inconceivable that Respondent registered the disputed domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) and that thereafter Respondent passively held the disputed domain name, which also supports findings of bad faith. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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”).
Moreover, Complainant argues that Respondent failed to make an active use of the disputed domain name. Rather, as mentioned above, Complainant alleges that the disputed domain name “times out” when it is typed into the URL bar of a search engine. Generally, panels have held that failure to make an active use of a disputed domain name indicates that a respondent registered and used by passively holding a disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Consequently, the Panel finds bad faith registration and passive holding under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used, by passively holding, the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
AWARD:
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyiq.cc> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 20, 2015
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