Morgan Stanley v. cao wei
Claim Number: FA1510001644112
Complainant: Morgan Stanley of New York, New York, United States of America.
Complainant Representative: Cowan, Liebowitz & Latman, P.C. of New York, New York, United States of America.
Respondent: cao wei of chang ning, SH, China.
REGISTRIES and REGISTRARS
Registries: Beijing Qianxiang Wangjing Technology Development Co., Ltd.
Registrars: Chengdu West Dimension Digital Technology Co., Ltd.
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 Examiner in this proceeding.
Mr. Peter Müller, as Examiner.
Complainant submitted: October 27, 2015
Commencement: October 28, 2015
Default Date: November 13, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
The Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is inter alia registered owner of the US trademark registration no. 1,707,196 MORGAN STANLEY, which was registered on August 11, 1992 for various services in class 36, as well as documents to show that the trademark is in current use.
The disputed domain name fully incorporates the MORGAN STANLEY Mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the MORGAN STANLEY Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain name.
The Complainant argues that the Respondent has no legitimate right or interest to the disputed domain name as it does not correspond to the Respondent’s name, as the Respondent does not actually engage in any legitimate business or commerce under the name MORGAN STANLEY, and as the Respondent is not commonly known by such name. In addition, the Complainant alleges that the Respondent is not a licensee of the Complainant, that the Complainant has not authorized the Respondent to register or use the MORGAN STANLEY Mark, and that the non use of the disputed domain name is not a legitimate or bona fide use.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, the disputed domain name is not used in connection with an active website.
The Examiner finds that the Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the MORGAN STANLEY Mark is famous and that the Respondent was doubtlessly aware of such mark when it chose and registered the disputed domain name. With regard to bad faith use, the Complainant argues that there can be no doubt that the Respondent in fact chose the disputed domain name because it was confusingly similar to the famous MORGAN STANLEY Mark and intended to capitalize on that confusion to attract Internet users to its forthcoming webpage. In addition, the Complainant states that the Respondent’s failure to make active use of the disputed domain name is further evidence of bad faith.
The Examiner accepts that the Respondent was most likely aware of the Complainant’s MORGAN STANLEY Mark at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith.
However, the Complainant has not provided sufficient evidence that the disputed domain name is being used in bad faith as well. At present, the disputed domain name is inactive. No further claim with regard to bad faith use was made. Previous URS decisions have held that the passive holding of a domain name could support, by clear and convincing evidence, that a domain name is being used in bad faith. However, passive holding does not per se lead in a finding of bad faith use. See Netflix, Inc. v. Masterclass Media et al., FA 1639527 (Forum Oct. 2, 2015); Allianz SE v. Registrant of xn--49s296f.xn--3ds443g / Rich Premium Limited / Domain Administrator, FA 1579170 (Forum Oct. 1, 2014). On the contrary, passive holding is equal to active use in bad faith only under specific circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
In sum, after carefully considering the evidence, the Examiner finds that the evidence is not clear and convincing that the domain name is being used in bad faith. Given that the URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse, the Examiner finds that the Complainant has not satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<morganstanley.ren>
Mr. Peter Müller, Examiner
Dated: November 18, 2015
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