Morgan Stanley v. nashan
Claim Number: FA1612001706094
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 <morgan-stanley.xyz>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically December 6, 2016; the Forum received payment December 6, 2016. The Complaint was received in English.
On December 9, 2016, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <morgan-stanley.xyz> 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) verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017, 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.xyz. Also on December 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant, Morgan Stanley, is a global company offering financial, investment, and wealth management services to a broad spectrum of clients. Complainant has rights to the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”), as well as other trademark agencies throughout the world (e.g., USPTO–Reg. No. 1,707,196, registered Aug. 11, 1992; SAIC–Reg. No. 775116, renewed Jan. 7, 2005). See Compl., at Attached Ex. 6. Respondent’s <morgan-stanley.xyz> is identical or confusingly similar to Complainant’s MORGAN STANLEY mark, as it contains the mark in its entirety, merely differing through the replacement of the space in the mark with a hyphen, and the addition of the generic top-level domain (“gTLD”) “.xyz.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by <morgan-stanley.xyz>, and Complainant has not granted Respondent license or permission to use the MORGAN STANLEY mark in a domain name. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the disputed domain does not resolve to an active website. See Compl., at Attached Ex. 8 (displaying the message, “This site can’t be reached”).
Respondent’s registration and use of the disputed domain name is in bad faith. Respondent is also respondent in another UDRP proceeding for infringing upon the MORGAN STANLEY mark, evidence that the registration of <morgan-stanley.xyz> is part of a pattern of bad faith registration as described in Policy ¶ 4(b)(ii). The disputed domain also causes initial interest confusion and disrupts the business of Complainant, a demonstration of Policy ¶ 4(b)(iii) bad faith. Respondent’s failure to make active use of the disputed domain is further evidence of Respondent’s bad faith. Additionally, due to the distinctive fame of Complainant’s mark, Respondent’s registration amounts to opportunistic bad faith. Finally, Respondent clearly had at least constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark at the time Respondent registered the domain name.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response in this proceeding. The panel notes that Respondent created the disputed domain name December 5, 2016, some 24 years after Complainant’s initial registrations.
Panel Note: Language of the Proceedings
Complainant alleged that because the disputed domain name contains English words and is registered in connection with the gTLD “.store,” which targets English-speaking Internet users, the proceeding should be conducted in English. Complainant also points out that English is a common or “connecting” language in business and travel; and Complainant claims that the requirement of translating the Complaint would be an undue burden, adding expense and delay to the proceeding. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English.).
The Panel agrees with Complainant that English is the appropriate language for these proceedings, inasmuch as Respondent has more than once targeted this Complainant’s protected mark for disputed domain names. Such targeting shows actual knowledge by Respondent of Complainant’s rights in its mark. Recommencement, which is permitted by Rule 11, is not necessary to effect a just outcome.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or the disputed domain name containing Complainant’s protected mark in its entirety.
Respondent registered and used a disputed domain name that is identical to Complainant’s protected mark.
Respondent registered and used and/or passively held the disputed domain name containing Complainant’s protected mark in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant has rights in the MORGAN STANLEY mark based upon registration of the mark with the USPTO and China’s SAIC (e.g., USPTO–Reg. No. 1,707,196, registered Aug. 11, 1992; SAIC–Reg. No. 775116, renewed Jan. 7, 2005). See Compl., at Attached Ex. 6. Registration of a mark with the USPTO or SAIC is sufficient to establish rights in that mark under the policy. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA 1621199 (Forum July 10, 2015) (holding, “Registration with the SAIC is sufficient to establish rights in a trademark.”). The Panel finds that Complainant’s registration of the MORGAN STANLEY mark with the USPTO and SAIC establishes rights in the mark under Policy ¶ 4(a)(i).
Complainant next contends Respondent’s <morgan-stanley.xyz> is identical or confusingly similar to Complainant’s MORGAN STANLEY mark, as it contains the mark in its entirety, merely differing through the replacement of the space in the mark with a hyphen, and the addition of the gTLD “.xyz.” Omitting a space in a mark to create a domain name is irrelevant in a Policy ¶ 4(a)(i) analysis. See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring: “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Similarly, the use of a hyphen and addition of a gTLD are irrelevant in determining the identical or confusingly similar nature of a disputed domain name under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Kellog North America Company v. Private Registration, FA 1613347 (Forum June 2, 2015) (finding that the <kelloggs.xyz> domain name is identical to the complainant’s KELLOGG’S mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that the disputed domain name is actually identical to Complainant’s MORGAN STANLEY mark pursuant to a Policy ¶ 4(a)(i) evaluation.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered and used and/or passively held a disputed domain name that is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that Respondent has no rights or legitimate interests in <morgan-stanley.xyz> as it is not commonly known by the disputed domain name. Nor has Complainant authorized Respondent to use the MORGAN STANLEY mark to register a domain name. Where no response is filed, the WHOIS information can be used to support findings that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information here identifies Respondent as “nashan”. An absence of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark, supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues that Respondent’s failure to make an active use of the disputed domain demonstrates that Respondent does not have rights or legitimate interests in the domain name. Failure to make active use of a domain is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or 4(c)(iii). 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).”). Respondent’s <morgan-stanley.xyz> does not resolve to an active website. See Compl., at Attached Ex. 8. The Panel agrees and finds that Respondent’s failure to make an active use of the disputed domain supports findings that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent’s registration supports findings of bad faith because the disputed domain name, <morgan-stanley.xyz>, is part of a pattern of bad faith registration as described in Policy ¶ 4(b)(ii). A respondent’s history of filing multiple infringing domain names can be taken as evidence of a pattern of bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Complainant points out that it is currently involved in a separate pending UDRP dispute with the same Respondent regarding another allegedly infringing domain name: <morganstanley.store>. The Panel agrees that Respondent’s registrations amount to a pattern of bad faith registration and finds that Respondent acts in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant contends Respondent’s bad faith is further demonstrated by the failure to make an active use of the disputed domain. Failure to make an active use, or inactive holding, of a domain can be evidence of a respondent’s bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). The Panel recalls that Respondent’s <morgan-stanley.xyz> does not resolve to an active website. See Compl., at Attached Ex. 8. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of its bad faith registration and use, and/or passive holding here, under Policy ¶ 4(a)(iii).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's MORGAN STANLEY mark, it is inconceivable that Respondent could have registered the <morgan-stanley.xyz> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant also points out that Respondent was on notice of Complainant’s rights in the mark based on the pending UDRP proceeding regarding <morganstanley.store>.The Panel here finds that an argument of bad faith based on constructive notice is irrelevant because UDRP case precedent does not find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel finds here, however, in agreement with Complainant, that Respondent shows actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name by virtue of its well-known international status, by virtue of its registration in the United States and in Respondent’s home country, and by Respondent’s attempts nominally to associate with the named entity; each of which is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <morgan-stanley.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 23, 2017
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