Morgan Stanley v. lan qing tian / lan qing tian
Claim Number: FA1606001678765
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is lan qing tian / lan qing tian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morgan-stanley.vip>, <morganstanley1935.vip>, <morganstanley1935.top>, <morganstanley1935.club> and <morgan-stanley.club>, registered with 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 Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2016; the Forum received payment on June 9, 2016.
On June 11, 2016, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <morgan-stanley.vip>, <morganstanley1935.vip>, <morganstanley1935.top>, <morganstanley1935.club>, <morgan-stanley.club> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 June 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2016 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@morgan-stanley.vip, postmaster@morganstanley1935.vip, postmaster@morganstanley1935.top, postmaster@morganstanley1935.club, and postmaster@morgan-stanley.club. Also on June 13, 2016, 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.
A timely Response was received and determined to be complete on June 27, 2016.
Complainant’s Additional Submission was received and determined to be compliant on June 27, 2016.
On July 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of numerous registrations, including US federal registration No. 1,707,196 with a filing date of August 11, 1992, for the trademark MORGAN STANLEY (the “Trademark”). Complainant also asserts common law rights by virtue of its use of the Trademark continuously in connection with its business in the financial world since Complainant’s founding in 1935.
The domain names are confusingly similar to the Trademark. They incorporate the Trademark in its entirety, together with the term “1935” which is descriptive because Complainant was founded in 1935.
Respondent has no rights or legitimate interests in the domain names. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent is not using the domain names to provide a bona fide offering of goods or services, or a legitimate non-commercial or fair use. Rather, the disputed domains resolve to inactively held websites.
Respondent registered and used the disputed domain names in bad faith. The Trade Mark is well-known and registered with the Trademark Clearinghouse, and therefore the disputed domain names could not possibly have been registered by Respondent without actual or at least constructive knowledge and thus a bad faith intent to capitalize on the substantial goodwill associated with the Trademark. Such registration, coupled with the inactive holding of the domain names, indicates bad faith registration and use per a non-exclusive analysis of Policy ¶ 4(a)(iii).
B. Respondent
Respondent consents to the transfer of the domain names <morgan-stanley.vip>, <morganstanley1935.top>, <morganstanley1935.club> and <morgan-stanley.club> to Complainant.
Respondent states that the purpose for registering the domain names was to benefit the public at large. Specifically, Respondent planned to use the domain names to establish an “online museum of exclusive network for the public enterprise,” and that its planned use exhibits a legitimate non-commercial (or fair) use (per Policy ¶ 4(c)(iii)).
C. Complainant’s Additional Submission
Respondent has produced no demonstrable, tangible, and concrete evidence of his purported plans surrounding an alleged “online museum,” and that such plans were undertaken prior to Respondent receiving notice of Complainant’s claims.
Respondent has consented to the transfer of the domain names <morgan-stanley.vip>, <morganstanley1935.top>, <morganstanley1935.club> and <morgan-stanley.club> to Complainant.
Complainant has established all the elements entitling it to transfer of the domain name <morganstanley1935.vip>.
Language of the Proceeding
The language of the registration agreement for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding.
The Respondent has not objected to the use of English as the language of the proceeding and has chosen to file the Response in both Chinese and English language.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Consent to Transfer
Respondent confirmed in the Response his consent to the transfer of the domain names <morgan-stanley.vip>, <morganstanley1935.top>, <morganstanley1935.club> and <morgan-stanley.club> to the Complainant. “[A] genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements” (see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132). The Panel agrees with this approach.
Decision—<morganstanley1935.vip>
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.
The Panel finds that Complainant has rights in the Trademark acquired through use and registration.
The domain name <morganstanley1935.vip> comprises the Trademark in its entirety, together with the descriptive and non-distinctive term “1935”, which is descriptive of the founding date of Complainant, and does not serve to distinguish the domain name from the Trademark in any significant way.
The Panel finds that the domain name <morganstanley1935.vip> is confusingly similar to the Trademark.
Rights or Legitimate Interests
There is no evidence that Complainant has authorized, licensed, or permitted Respondent to register or use the domain name <morganstanley1935.vip> or to use the Trademark. Complainant has prior rights in the Trademark which precede Respondent’s registration of the domain name <morganstanley1935.vip> (June 6, 2016) by decades. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain name <morganstanley1935.vip>, and the burden is thus on Respondent to produce evidence to rebut this presumption.
The Trademark is a well-known mark globally, including in China, where Respondent is based. Furthermore, Respondent was on notice of Complainant’s rights in the Trademark prior to registration of the domain name <morganstanley1935.vip> by virtue of Complainant’s registration of the Trademark with the Trademark Clearinghouse.
Respondent has made no use of the domain name <morganstanley1935.vip> to date and there has been no evidence adduced to support Respondent’s bare assertion that he intends to make a legitimate non-commercial or fair use of the domain name.
Whilst Respondent claims to have registered the domain name <morganstanley1935.vip> for the purpose of setting up an “online museum of exclusive network for the public enterprise”, Respondent has failed to adduce any evidence of his claimed plans in this regard, and that such plans were undertaken prior to Respondent receiving notice of Complainant’s claims.
The Panel therefore finds that Respondent has failed to show, for the purposes of the Policy, that he has acquired any legitimate trademark rights in respect of the domain name <morganstanley1935.vip> or that the domain name has been used in connection with a bona fide offering of goods or services.
In light of the matters described above, the Panel finds the requisite element of bad faith has been satisfied, under the Panel’s general discretion.
For all the foregoing reasons, the Panel concludes that the domain name <morganstanley1935.vip> has been registered and is being used in bad faith.
Respondent has consented to the transfer of the domain names <morgan-stanley.vip>, <morganstanley1935.top>, <morganstanley1935.club> and <morgan-stanley.club>
Accordingly, it is Ordered, without making any findings adverse to the Respondent, that the domain names <morgan-stanley.vip>, <morganstanley1935.top>, <morganstanley1935.club> and <morgan-stanley.club> domain names be TRANSFERRED from Respondent to Complainant.
With respect to the disputed domain name <morganstanley1935.vip>, having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain name <morganstanley1935.vip> be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: July 13, 2016
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