Morgan Stanley v. xgq et. al.
Claim Number: FA1706001734288
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: xgq of Hangzhou,, International, CN.
Respondent Representative: «cFirstName (none)» «cMiddle(none)» «cLastName (none)»
REGISTRIES and REGISTRARS
Registries: Jiangsu Bangning Science and Technology
Registrars: 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 Examiner in this proceeding.
Honorable Carolyn Marks Johnson sits as Examiner.
Complaint submitted: June 2, 2017
Commencement: June 5, 2017
Default Date: June 20, 2017
Having reviewed the communications records, the Examiner finds that the Forum discharged its responsibility under usRS 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.
Although Respondent defaulted, usRS 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 a domain name should be suspended.
IDENTICAL TO OR CONFUSINGLY SIMILAR
Complainant met the standard set out in 1.2.6.1 of the usRS Procedure since Complainant proved its rights to the valid U.S. trademark registration No. 1,707,196, first used in commerce September 16, 1935; registered August 11, 1992, covering goods and services, including “Investment banking services, financial services in the nature of underwriting, distribution, and trading of securities; financial services in the nature of merger, acquisition, restructuring, and other corporate finance activities, stock brokerage and research services; investment management and advice, and financial services in the nature of trading futures, options, foreign exchange, and commodities in Class 36 (U.S. CLS.10: and 102,” and confirmed to be a trademark that is in current use.
Complainant also holds trademark registration No. 4,470,389, registered January 21, 2014, for “computer software for use in investment banking, investment management, investment research and analysis, investment advice, financial information services, financial projections, compilation of market indices, payment systems, accounting systems, on-line banking, financial planning, and the trading of securities, currencies, options foreign exchange futures, funds and commodities in Class 9 U.S. CLS. 21, 23, 26, 36 and 38; first used in commerce, June 30, 2002, also confirmed to be a trademark that is in current use. Complainant also holds SAIC Nos. 775116 and 607509, registrations issued in China.
Complainant also owns domain name <MORGANSTANLEYCHINA.COM>, which resolves to its primary site in China.
Respondent does not challenge Complainant’s trademark rights.
The relevant part of the disputed domain name is MORGAN STANLEY and the added top-level domain gTLD “.top” being a required element of every domain name and being irrelevant for assessing whether or not a mark is identical or confusingly similar to a protected mark, the additions in this case do nothing to distinguish the disputed domain name from Complainant’s trademark.
The Examiner finds that the disputed domain name is identical to Complainant’s protected MORGAN STANLEY mark; Complainant satisfied the elements of usRS Procedure 1.2.6.1.
NO RIGHTS TO OR LEGITIMATE INTERESTS
Complainant met the standard set out in 1.2.6.2 of the usRS Procedure since Complainant shows that it did not authorize Respondent to register a domain name containing Complainant’s protected trademark and Complainant correctly urges that Respondent is not commonly known by the mark or the disputed domain name.
Complainant further asserts that Respondent acquired no legitimate interests in Complainant’s protected mark by registering and/or purchasing this domain name, which does not resolve to an active website. Respondent holds the domain passively, which is not a bona fide use. See Complaint, Explanatory Text. As Complainant notes: “[T]he only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and to intentionally trade on the goodwill associated with Complainant’s marks,” which is not a bona fide or legitimate use. Further, Respondent shows no plan and no expenditures for development. Respondent filed no Response. Respondent is silent as to any claimed rights to or legitimate interests created by any bona fide use or offering. Respondent is in default. Respondent’s plans are unknown and Examiner presumes none exist. Further, any elusive promise or assurance, resulting from a mere purchase of a name, do not create legitimate interests in a disputed domain name containing another’s protected mark.
Accordingly, the Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of usRS Procedure 1.2.6.2.
BAD FAITH REGISTRATION AND USE:
Complainant satisfied the requirements of usRS Procedure 1.2.6.3.
As noted above, Respondent does not dispute Complainant’s trademark rights. The record shows that the disputed domain name is held passively, which supports findings of bad faith. See Complaint, Explanatory Text.
Given the worldwide fame of Complainant’s mark, the registrations in Complainant’s and Respondent’s geographic area, the long use in commerce throughout the world and the nominal expropriation of a famous trademark, Examiner finds that Respondent had actual knowledge of Complainant and Complainant’s famous marks and intentionally seeks to capitalize upon the goodwill associated with Complainant’s protected marks. Such conduct supports findings of bad faith registration and use and/or passive holding and having been registered and used in bad faith no good faith future use is possible. See Complaint, Explanatory Text.
Further, Complainant notes: “The disputed domain name was the subject of a prior URS and had been suspended for at least a year prior to the time it was registered by Respondent.” The Examiner finds that it is inconceivable that Respondent did not know of that prior case and its holding and Examiner finds Respondent had actual knowledge of Complainant’s rights and interests in its own mark.
The Examiner finds that Respondent purchased and/or registered and passively held the disputed domain name. Such conduct supports findings that Respondent acted in bad faith. Complainant satisfied the elements of usRS Procedure 1.2.6.3.
Complaint was NOT brought in an abuse of this type of proceeding and to the Examiner’s best knowledge did NOT contain material falsehoods.
After reviewing the Complainant’s submissions, the Examiner finds that
Complainant demonstrates all three elements of the usRS by a standard of clear and convincing evidence. Therefore, the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
Honorable Carolyn Marks Johnson (Ret.), Examiner
Dated: June 23, 2017
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