Morgan Stanley v. ZhangXin
Claim Number: FA1612001705423
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: ZhangXin of Shen Yang Shi, Liao Ning, China.
REGISTRY and REGISTRAR
Registry: DotOnline Inc.
Registrar: 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 Examiner in this proceeding.
Alan L. Limbury, as Examiner.
Complainant submitted: December 1, 2016
Commencement: December 2, 2016
Default Date: December 19, 2016
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") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant provides financial, investment and wealth management services in over 40 countries under the trademark MORGAN STANLEY, which Complainant has used since 1935.
The recently registered domain name does not resolve to an active website. In the absence of any Response, the Examiner accepts Complainant’s assertion that Respondent offered to transfer the domain name to Complainant for $600.
Even though Respondent has defaulted, URS Procedure 1.2.6 requires 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 the 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 Complainant holds a valid national or
regional registration 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.
Complainant has demonstrated that it is the registrant of United States federally registered service mark MORGAN STANLEY, No. 1,707,196, registered on August 11, 1992 and United States federally registered trademark MORGAN STANLEY, No.4,470,389, registered on January 21, 2014; and that the mark is in current use.
The domain name comprises Complainant's mark (hyphenated) together with the gTLD ".online”. Neither the hyphen nor the gTLD do anything to detract from the distinctiveness of Complainant’s mark and may be disregarded. The Examiner finds that the domain name is identical to Complainant’s MORGAN STANLEY mark.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Complainant says, upon information and belief, that Respondent is not commonly known by either of the names Morgan or Stanley; Respondent is not a licensee of Complainant, nor has Complainant authorized Respondent to register or use the MORGAN STANLEY marks or the domain name; Respondent’s passive holding of the domain name is not a legitimate or bona fide use; and that Complainant’s MORGAN STANLEY marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the
domain name is that Respondent registered the domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. That is not a legitimate or bona fide use of a domain name.
In the absence of any Response, the Examiner finds that Complainant has shown prima facie that Respondent has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith, such as: Registrant has registered the domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Complainant submits this is such a case.
The Examiner accepts Complainant’s submission that its “MORGAN STANLEY” mark is famous and that Respondent must have been aware of that mark when registering the domain name. Accordingly, the Examiner finds that Respondent registered the domain name in bad faith. Since any use of the domain name would infringe Complainant’s rights in its MORGAN STANLEY trademark, the Examiner finds that, in the circumstances of this case, Respondent’s passive use of the Domain Name amounts to bad faith use.
Further, Respondent’s failure to contradict Complainant’s assertion that Respondent offered to sell the domain name to Complainant for $600 supports a finding of bad faith registration and use.
The Examiner finds that Complainant has established that the domain name was registered and is being used in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence. The Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<morgan-stanley.online>
Alan L. Limbury, Examiner
Dated: December 22, 2016
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