Morgan Stanley v. Guanrui / GROUPFIELD LIMITED / Intdomain / Apexed / Zhao Jiafei
Claim Number: FA1509001639091
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Guanrui / GROUPFIELD LIMITED / Intdomain / Apexed / Zhao Jiafei (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleyiq.net>, <morganstanleyiq.org>, and <morganstanleyiq.info>, registered with GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com.
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 September 23, 2015; the Forum received payment on September 23, 2015.
On September 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleyiq.info> 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 September 24, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <morganstanleyiq.net> and <morganstanleyiq.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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.net, postmaster@morganstanleyiq.org, postmaster@morganstanleyiq.info. Also on September 24, 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 October 21, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant offers financial, investment and wealth management services worldwide. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered on August 11, 1992). Respondent’s <morganstanleyiq.net>, <morganstanleyiq.org>, and <morganstanleyiq.info> domain names are confusingly similar to the MORGAN STANLEY mark because each domain contains the mark, less the space between words, combined with the descriptive unit “IQ,” and a generic top-level domain (“gTLD”).
Respondent is not commonly known by the disputed domain names because it has not been authorized by Complainant to use the MORGAN STANLEY mark and because there is no evidence provided to suggest being commonly known by the domains. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name resolves to a parked webpage containing links which compete with Complainant, and, from which Respondent presumably receives click-through referral fees. In addition, in correspondence with Complainant, Respondent has offered the <morganstanleyiq.net> and <morganstanleyiq.info> domain names for sale to Complainant for $1,590.00 and $1,500.00 respectively.
Respondent registered the <morganstanleyiq.net> and <morganstanleyiq.info> domain names in bad faith because it has offered them for sale to Complainant for $1,590.00 and $1,500.00 respectively. Respondent has demonstrated a pattern of bad faith registration and use of domain names through a history of UDRP decisions decided against it. Respondent uses all of the domain names in bad faith because each domain name resolves to a parked webpage containing links which compete with Complainant, and, from which Respondent presumably receives click-through referral fees. Respondent also registered each domain in bad faith because it did so with actual knowledge of Complainant’s MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <morganstanleyiq.net> domain name was created on September 17, 2015, while the <morganstanleyiq.org> and <morganstanleyiq.info> domain names were created on September 18, 2015.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel determines that there is ample evidence in the record to show that the Respondent is in control of all three disputed domain names. The domains are controlled by a single entity because they were each created on or around the same day and because each domain name uses the same hosting ISP to resolve to the same parked page, as shown by Exhibits 3 & 5. In addition, Respondent has admitted to registering other domain names containing the “morganstanleyiq” phrase, in Exhibit 6, but provided different information in registration for each of those domains as well, as shown in Exhibit 7.
As such, for the purposes of this proceeding, all three disputed domain names will be considered as owned by the Respondent.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the reasonable and undisputed contentions of the Complainant. As such, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain names, and that the Respondent engaged in bad faith use and registration of the disputed domain names.
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.”).
It is clear that each of the disputed domain names is confusingly similar to the Complainant’s registered and famous trademark. Respondent’s <morganstanleyiq.net>, <morganstanleyiq.org>, and <morganstanleyiq.info> domain names are confusingly similar to the MORGAN STANLEY mark because each domain name contains the mark, less the space between words, combined with the descriptive unit “IQ,” and a gTLD. These additional letters to the Complainant’s trademark or the different gTLDs do not distinguish the disputed domain names from the registered trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
Complainant alleges that Respondent is not commonly known by the disputed domain names because there is no evidence to suggest that Respondent uses the domain names as a business name and because Complainant has not authorized Respondent to use the MORGAN STANLEY mark. The the WHOIS information lists “Zhao Jiafei,” “Intdomain,” and “Guanrui” as Registrants for the various domains. Respondent has failed to provide further evidence to indicate being commonly known by the domain names.
Accordingly, the Panel finds` that Respondent is not commonly known by the <morganstanleyiq.net>, <morganstanleyiq.org>, and <morganstanleyiq.info> domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name resolves to a parked webpage containing links which compete with Complainant, and, from which Respondent presumably receives click-through referral fees. Complainant’s Exhibit 5 displays screenshots of each domain, showing links including “Ivy Investment,” “Wealth Management,” and “Chase Private Client.” Such use suffices to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Accordingly, the Panel finds that Respondent fails to use the resolving websites to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Complainant also alleges that Respondent lacks rights or legitimate interests in the <morganstanleyiq.net> and <morganstanleyiq.info> domain names because in correspondence with Complainant, Respondent has offered them for sale for $1,590.00 and $1,500.00 respectively. Complainant has provided this correspondence in EXHIBIT 6. A willingness to sell a disputed domain in excess of out-of-pocket costs sufficient to establish a lack of Respondent’s rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii).
As such, the Panel finds that Respondent lacks rights or legitimate interests in the <morganstanleyiq.net> and <morganstanleyiq.info> domain names under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered the <morganstanleyiq.net> and <morganstanleyiq.info> domain names in bad faith because it has offered them for sale to Complainant for $1,590.00 and $1,500.00 respectively. Complainant has provided evidence of these offers in Exhibit 6, correspondence between Complainant and Respondent. Also, in Exhibit 6, Respondent appears to admit a willingness to register domain names containing the MORGAN STANLEY mark until Complainant agrees to purchase such a domain from Respondent. S pecific sales offers in excess of out of pocket costs, as well as sales offers indicating registration has been done for the purpose of profiting from a complainant, is sufficient to show bad faith under Policy ¶ 4(b)(i).
Accordingly, the Panel finds that Respondent registered the <morganstanleyiq.net> and <morganstanleyiq.info> domain names in bad faith under Policy ¶ 4(b)(i).
Complainant alleges that Respondent has demonstrated a pattern of bad faith registration and use of domain names. Complainant has provided a list of prior UDRP decisions on page 11 of the Complaint, which Complainant purports establish Respondent as a serial cyber-squatter. Prior decisions decided against a respondent is sufficient to show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
As such, the Panel finds that Respondent has demonstrated a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent uses the <morganstanleyiq.net>, <morganstanleyiq.org>, and <morganstanleyiq.info> domain names for the purpose of disrupting Complainant’s business operations because each domain name resolves to a parked webpage containing links which compete with Complainant, and, from which Respondent presumably receives click-through referral fees. Complainant’s Exhibit 5 displays screenshots of each domain, showing links including “Ivy Investment,” “Wealth Management,” and “Chase Private Client.” Such use constitutes disruption under Policy ¶ 4(b)(iii), thereby showing bad faith use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel, therefore, concludes that the disputed domain names are used in bad faith under Policy ¶ 4(b)(iii).
Complainant also alleges that the disruptive use described above shows that Respondent uses the domains in bad faith to attract Internet users for commercial gain. The Panel, therefore, further finds that such behavior by Respondent here constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark, as evidenced by Respondent’s use of the domain names and the fame of the mark. Complainant urges that Respondent would be “hard-pressed to provide any legitimate explanation for registering the disputed domain names other than to take advantage of the goodwill and brand recognition associated with Complainant.” Complaint, page 9. When respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark at the time of registration and, as such, registered the domain names in bad faith under Policy ¶ 4(a)(iii).
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.net>, <morganstanleyiq.org>, and <morganstanleyiq.info> domain names be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: October 27, 2015
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