Morgan Stanley v. NaShan
Claim Number: FA1611001703414
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is NaShan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.store>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2016; the Forum received payment on November 17, 2016.
On November 18, 2016, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <morganstanley.store> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 November 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@morganstanley.store. Also on November 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant holds the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992), and uses it in connection with its business in the financial world. See Compl., at Attached Ex. 6. Respondent’s <morganstanley.store> domain name is identical to the MORGAN STANLEY mark because it incorporates the mark completely, less the space, and merely adds the top-level domain (“TLD”) “.store.”
Respondent has not been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name because it does not resolve to an active website. See Compl., at Attached Ex. 8 (reading, “This site can’t be reached”).
Respondent registered and used the disputed domain name in bad faith. Because the MORGAN STANLEY mark was registered by Complainant with the Trademark Clearinghouse, Respondent received notice and warning of Complainant’s rights in the mark upon attempting to register the <morganstanley.store> domain name. Because of the Trademark Clearinghouse notice, coupled with the fame of the MORGAN STANLEY mark, and because Respondent has inactively held the disputed domain, Policy ¶ 4(a)(iii) nonexclusive bad faith registration and use is evident.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a famous provider of a full range of financial, investment, and wealth management services to a broad spectrum of clients.
2. Complainant owns the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992), and uses it in connection with its business in the financial world.
3. Respondent registered the <morganstanley.store> domain name on November 11, 2016.
4. Since the domain name was registered by Respondent and whilst Respondent has been the holder of the domain name, it has not resolved to an active website.
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(f), 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 (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.”).
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
Complainant has requested that this administrative proceeding be adjudicated in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel is entitled to weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant makes the following arguments:
• The disputed domain name contains English words, namely a famous English language mark. See F. Hoffmann-La Roche AG v. Morell Kontori, D2015-1183 (WIPO Sept. 3, 2015).
• The disputed domain name is registered in connection with the generic Top Level Domain .store, which primarily targets English-speaking Internet users. See Instagram, LLC v. lu xixi, PRIVATE, D2015-1168 (WIPO Sept. 3, 2015).
• English is a common or “connecting” language in business and travel. See Hoffmann-La Roche Inc. v. Chad Washburn, D2013-1582 (WIPO Nov. 24, 2013).
• Complainant would have to translate all the documents of the proceeding into Chinese, if the proceeding were to be conducted in the Chinese language, which would result in the Complainant having to incur additional costs and occasioning delay in the proceeding. See Calzaturificio Casadei S.p.A. v. Parada Oscar, D2015-0307 (WIPO Apr. 22, 2015); Tumblr, Inc. v. WHOIS Agent, Domain WhoIs Protection Service / jiangchunyuan, D2014-1132 (WIPO Aug. 26, 2014).
Therefore, the Panel finds that persuasive evidence and argument have been adduced by Complainant to show the likely possibility that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel finds that the proceeding should be conducted in the English language.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant alleges it holds the MORGAN STANLEY mark through its registrations with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl., at Attached Ex. 6. The Panel agrees that Complainant’s USPTO registration sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY trademark. Complainant argues that Respondent’s <morganstanley.store> domain name is identical to the MORGAN STANLEY mark because it incorporates the mark completely, less the space, and merely adds the TLD “.store.” The Panel agrees that, according to Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”), The Panel finds that Respondent’s <morganstanley.store> domain name is identical to the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the 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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s MORGAN STANLEY trademark and used it in its domain name, implying that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant;
(b) The domain name has not resolved to an active website, but has been inactively held by Respondent;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has not been commonly known by the disputed domain name and that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. While the WHOIS lists “NaShan” as registrant of record, the Panel agrees that the evidence does not suggest Respondent as commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name);
(e) Complainant submits that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name as it does not resolve to an active website. See Compl., at Attached Ex. 8 (reading, “This site can’t be reached”). Panels have agreed that such inactive holding does not amount to rights and legitimate interests. See Hewlett-Packard Co. v. Shemesh, FA 434145 (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).”). Therefore, the Panel finds that no rights or legitimate interests in the domain name have been established by Respondent.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel finds that while Complainant has not made arguments under the specific criteria set out in Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (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).
Secondly, Complainant argues that Respondent registered and used the disputed domain name in bad faith (for reasons that qualify under a nonexclusive analysis of Policy ¶ 4(a)(iii)) for the following reasons: the MORGAN STANLEY mark was registered by Complainant with the Trademark Clearinghouse, the fame of the MORGAN STANLEY mark, and because Respondent has inactively held the disputed domain name. The Trademark Clearinghouse registration coupled with the fame of the mark are sufficient to constitute actual notice to Respondent. See Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, WIPO Case, D2014-1040, in which the panel stated:
“…Respondent should have received notice of Complainant's rights in the WESTIN . . . trademarks from the Trademark Clearinghouse (‘TMCH’) when she registered the disputed domain names. As such, Respondent would have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain names in 2014. The Panel finds that the 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 with the intent to create an impression of an association with Complainant’s . . . WESTIN . . . marks[.]”
The Panel agrees with those observations and so finds.
Thirdly, inactive holding of a domain name may also be seen to constitute bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. Jordin Barth, FA1211001473274 (Forum Jan. 14, 2013) (finding that the respondent’s failure to make an active use of the disputed domain name from the time it was registered until the time it was contacted by the complainant’s counsel indicated that the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel therefore finds that Policy ¶ 4(a)(iii) nonexclusive bad faith registration and use have been established.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s trademark and its holding of the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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.store> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC,
Panelist
Dated: December 14, 2016
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