Morgan Stanley v. Zhao Zhong Xian
Claim Number: FA1612001707307
Complainant: Morgan Stanley of New York, New York, United States of America.
Complainant Representative:
Complainant Representative: Cowan, Liebowitz & Latman, P.C. of New York, New York, United States of America.
Respondent: Zhao Zhong Xian of Beijing, Beijing, International, CN.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: DotSite Inc.
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
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.
Piotr Nowaczyk, as Examiner.
Complainant submitted: December 14, 2016
Commencement: December 15, 2016
Default Date: December 30, 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.
There are no multiple complainants or respondents and no extraneous domain names require dismissal.
The Complainant, Morgan Stanley of New York, United States, is a provider of financial, investment and wealth management services.
The Complainant is the owner of, among others, the following trademark registrations:
- US trademark registration No. 1707196 for MORGAN STANLEY (word) registered on August 11, 1992 to cover goods and services in class 36;
- US trademark registration No. 4470389 for MORGAN STANLEY (word) registered on January 21, 2014 to cover goods and services in classes 9,16.
The MORGAN STANLEY mark is well-known internationally and enjoys a great reputation in the financial world.
The Complainant promotes its business through the website www.morganstanley.com.
The Complainant contends that the Respondent’s domain name, <morgan-stanley.site>, is identical or confusingly similar to the MORGAN STANLEY mark, and was registered and is being used in bad faith by the Respondent who has no rights or legitimate interests in the Domain Name.
On December 14, 2016, the Respondent, in response to the cease and desist letter sent by the Complainant’s attorney, offered to transfer the Domain Name for the amount of $500.
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.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant has proved its right to the valid US trademark registrations. Further, the Complainant has proved that the MORGAN STANLEY mark is in current use by presenting printouts from various pages of the Complainant’s website.
The relevant part of the Domain Name is <morgan-stanley>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the Domain Name from the Complainant’s trademark. In this light, the Examiner finds the Domain Name is identical to the Complainant’s mark.
Therefore, the Complainant met the standard sets out in paragraph 1.2.6.1. of the URS Procedure.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in the name “Morgan Stanley” nor is the Respondent commonly known by this name. Moreover, the Complainant has not authorized Respondent’s use of its mark and has no affiliation with the Respondent.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Examiner accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and concludes that the second element of paragraph 1.2.6.2. of the URS Procedure is satisfied.
BAD FAITH REGISTRATION AND USE
The Respondent has registered the Domain Name in bad faith since he knew or must have known of the Complainant's mark when registering <morgan-stanley.site>.
The Respondent is passively holding the Domain Name which itself can be considered as a bad faith use of a domain name. Moreover, the Respondent offered to sell the Domain Name to the Complainant for the amount exceeding the registration costs which the Examiner found to be a further evidence of bad faith use and registration.
In the light of above, registering a domain name corresponding to a famous and reputable trademark, and subsequent passive holding of such a domain, thus preventing the trademark holder from registering such a domain, is considered to satisfy the standard set out in paragraph 1.2.6.3. of the URS Procedure.
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 names be SUSPENDED for the duration of the registration.
<morgan-stanley.site>
Piotr Nowaczyk, Examiner
Dated: December 30, 2016
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