Morgan Stanley v. li min / 李敏
Claim Number: FA1709001747467
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is li min / 李敏 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanley-investmentbank.vip>, <morganstanley.ink>, <xn--morganstanley-nn3xu84h5dgc6r4g0lu84a.club>, <morganstanley-investmentbank.group>, <morganstanley-investmentbank.club>, <morganstanley-global.group>, <xn--morganstanley-go1ug27b2k0a7j7b7lo.xn--55qx5d>, and <morganstanley.xn--55qx5d>, registered with 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 Panelist in this proceeding.
David L. Kreider, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 5, 2017; the Forum received payment on September 5, 2017.
On September 7, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <morganstanley-investmentbank.vip>, <morganstanley.ink>, <xn--morganstanley-nn3xu84h5dgc6r4g0lu84a.club>, <morganstanley-investmentbank.group>, <morganstanley-investmentbank.club>, <morganstanley-global.group>, <xn--morganstanley-go1ug27b2k0a7j7b7lo.xn--55qx5d>, and <morganstanley.xn--55qx5d> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. 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 September 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint (in both English and Chinese), setting a deadline of September 28, 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@morganstanley-investmentbank.vip, postmaster@morganstanley.ink, postmaster@xn--morganstanley-nn3xu84h5dgc6r4g0lu84a.club, postmaster@morganstanley-investmentbank.group, postmaster@morganstanley-investmentbank.club, postmaster@morganstanley-global.group, postmaster@xn--morganstanley-go1ug27b2k0a7j7b7lo.xn--55qx5d, and postmaster@morganstanley.xn--55qx5d. Also on September 8, 2017, 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.
A timely Response was received and determined to be complete on September 27, 2017.
Complainant made an Additional Submission on September 28, 2017. The Panel finds that Complainant’s Additional Submission complies with Supplemental Rule 7 and was submitted timely.
On October 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual and legal grounds (UDRP Rule 3(b)(ix)):
a. The manner in which the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (UDRP Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i)).
Complainant Morgan Stanley offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. With over 1,000 offices in over 40 countries, and over 55,000 employees worldwide, including in China. Complainant is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world.
Complainant has used marks containing or comprising MORGAN STANLEY in connection with various financial and related services since at least as early as 1935, and the marks remain in wide-spread use today worldwide.
Complainant is the owner of the domain name MORGANSTANLEY.COM, as well as thousands of variations thereof across a broad spectrum of gTLDs and ccTLDs. Complainant first registered MORGANSTANLEY.COM in 1996. The MORGANSTANLEY.COM domain name resolves to Complainant’s primary website, located at www.morganstanley.com. The MORGAN STANLEY marks are well-known to consumers and famous.
A number of panels of the Forum have recognized that MORGAN STANLEY is a well-known mark. See, e.g., Morgan Stanley v. jorge Stephan, FA 1219168 (Forum Sept. 12, 2008); Morgan Stanley v. Meow, FA 671304 (Forum May 22, 2006); Morgan Stanley v. Albert Jackson, FA 244092 (Forum Apr. 19, 2004). And at least one prior DRS expert has held: “The evidence that has been presented by the Complainant establishes that its ‘Morgan Stanley’ trade mark has become very well-known on an international basis, having been used extensively and continuously since 1935.” Morgan Stanley v. Morgan Stanley Latin America, LLC, DRS 3070 (Nominet Dec. 15, 2005).
Complainant owns registrations for its MORGAN STANLEY marks for financial services and related goods and services in countries all over the world, including in the U.S. (e.g., 1,707,196 and 4,470,389) and China (e.g., 3,069,699, 3,069,913, 775,116 and 607,509). These trademark registrations “conclusively prove[] Complainant’s rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i).” Morgan Stanley v. Denve Dallas, FA 1342149 (Forum Oct. 5, 2010).
Moreover, Complainant established its rights in the MORGAN STANLEY mark decades before Respondent registered the disputed domain name.
Respondent is the owner of the disputed domain names. The disputed domain names, each which incorporates Complainant’s MORGAN STANLEY mark in whole, must be deemed virtually identical or confusingly similar to Complainant’s registered MORGAN STANLEY marks. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
The addition of generic or descriptive terms that consumers would associate with Complainant (such as “investment bank” and “global”) to some of the disputed domain names does nothing to distinguish Respondent’s domain name from Complainant’s mark. See Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC, FA 1246046 (Forum Mar. 24, 2009) (addition of generic words “bank” and “online” in domain MORGANSTANLEYBANKONLINE to complainant’s MORGAN STANLEY mark did not obviate confusion); Morgan Stanley v. Ke Zhao, FA 1317816 (Forum May 17, 2010) (finding “Respondent’s <morganstanleyhedgefunds.com> domain name to be confusingly similar to Complainant’s MORGAN STANLEY mark”). Nor does the addition of 摩根士丹利 (Chinese transliteration of Morgan Stanley) or 摩根大通投行 (Chinese transliteration of JP Morgan Chase and Chinese translation of Investment Bank) to some of the domain names obviate likely confusion. See Morgan Stanley v. WHOIS AGENT / DOMAIN WHOIS PROTECTION SERVICE, FA 1556456 (Forum June 5, 2015) (addition of “Hwaxin,” name of well-known Chinese security company, to Complainant’s MORGAN STANLEY mark did not obviate confusing similarity).
The addition of the various generic TLDs and elimination of spaces also fail to obviate the confusing similarity. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (elimination of spaces between terms does not establish distinctiveness from complainant’s mark).
b. Why Respondent should be considered as having no rights or legitimate interests in respect of the domain names that are the subject of the Complaint. (UDRP Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii)).
Upon information and belief, neither MORGAN STANLEY nor the disputed domain names are part of Respondent’s name. Additionally, upon information and belief, prior to the time Complainant established rights in its MORGAN STANLEY marks, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain names, and Respondent was not commonly known by those names. See Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187 (Forum Nov. 3, 2004) (no rights or legitimate interest in domain name DETROL.ORG because respondent had not offered any evidence and there was no proof suggesting that it was commonly known by the DETROL.ORG domain name); SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY’S name).
Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the MORGAN STANLEY mark or the disputed domain names. Indeed, Respondent has no relationship whatsoever with Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Respondent is not using the disputed domain names in connection with any bona fide offering of goods and services or for any legitimate or fair use. The disputed domain names do not resolve to active websites. The passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006) (“passive holding of a domain name does not constitute ‘legitimate non-commercial or fair use’”); TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii)”).
Complainant’s MORGAN STANLEY marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain names is that Respondent registered the disputed domain names 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. See Drexel University v. David Brouda, D2001-0067 (WIPO Mar. 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”).
Indeed, as held by the Panel in Viceroy Cayman Ltd. v. Next Reservation Ltd / Privacy Protection Service, Inc. d/b/a PrivacyProtect.org:
Complainant’s VICEROY trademark has been extensively used and advertised for many years in association with upscale hotels and associated services and is well known in relation to such services. Respondent has registered or acquired the disputed domain name comprised of Complainant’s well-known trademark and the geographical terms ‘Yas’ and ‘Abu Dhabi’ which describe the geographical location of Complainant's hotel in the United Arab Emirates. Complainant asserts that based on the geographical terms associated with Complainant’s VICEROY trademark in the disputed domain name and the contents of the web page associated with the disputed domain name Complainant has made out a prima facie case that Respondent would not have chosen the disputed domain name unless Respondent was seeking to intentionally trade on the goodwill associated with Complainant’s VICEROY trademark. Accordingly, Respondent cannot establish a bona fide interest in the disputed domain name.
D2014-0919 (WIPO July 28, 2014). Similarly here, Respondent cannot establish a bona fide or legitimate interest in the disputed domain names, each of which incorporates in full one of the most famous marks in the financial industry. See Morgan Stanley v. Morgan Stanley Latin America, LLC, DRS 3070 (Nominet Dec. 15, 2005) (“Given the strong reputation of the ‘Morgan Stanley’ name and business, and based on the facts and circumstances set out in the Complaint, I cannot think of any justification for the Respondent’s registration or use of the Domain Name”).
Such use of the disputed domain names also causes “initial interest confusion,” which is disruptive to Complainant, its business, and goodwill in the MORGAN STANLEY marks. This also is not a legitimate use of a domain name or bona fide offering of goods and services. See Morgan Stanley v. Patrick Kerr, DRS 5306 (Nominet Feb. 11, 2008) (“as the Complainant suggests, the reason that an internet user would arrive at the Respondent’s website in the first place is likely to be that he or she was looking for the Complainant’s website or for some information in connection with its Dean Witter branded products and services. Thus they would have succumbed to what is often referred to as ‘initial interest confusion.’ This is a case where the Domain Name [DEANWITTER.CO.UK] is such that people would automatically assume that the Complainant owned or operated it. Accordingly, I find that the circumstances indicate that the type of confusion described in paragraph 3(a)(ii) of the Policy is either occurring or likely to occur”); Retail Royalty Co. and AE Direct Co LLC v. A K, FA 1580871 (Forum Oct. 31, 2014) (no legitimate interest or bona fide offering with respect to domain name that caused initial interest confusion).
Lastly, Respondent does not have any legitimate rights in the disputed domain names given the prior use and registration of Complainant’s MORGAN STANLEY marks by Complainant and its affiliates and predecessors-in-interest in numerous countries throughout the world. Complainant’s prior use and registration of such marks give Respondent actual, or at a minimum constructive, knowledge of such use and registration. See Morgan Stanley v. Chan, FA 244123 (Forum Apr. 23, 2004) (respondents likely had knowledge of complainant’s MORGAN STANLEY marks prior to registration of domain name due to complainant’s “long-standing use and fame” of marks, and fact that marks were registered with USPTO provided constructive notice to respondent of complainant’s rights in MORGAN STANLEY marks).
c. Why the domain names should be considered as having been registered and used in bad faith. (UDRP Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii)).
It is clearly more than a coincidence that Respondent chose and registered domain names that are confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant has a long and well-established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he or she chose and registered the disputed domain names, and in fact chose the domain names because they are confusingly similar to Complainant’s well-known marks and Respondent intended to capitalize on that confusion. This alone constitutes evidence of bad faith of a registration of a domain. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM); Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”).
Indeed, Complainant’s marks are so well-known that Respondent would be hard-pressed to provide any legitimate explanation for registering the disputed domain names other than to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY marks. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith); Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] 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”).
By causing initial interest confusion, Respondent’s use and registration of the disputed domain names disrupts the business of Complainant, which is additional evidence of bad faith use and registration. See Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion).
Respondent’s failure to make active use of the disputed domain names is further evidence of bad faith use and registration. See Kohl's Illinois, Inc. v. c/o kphls.com; c/o kohals.com; c/o kohlsdepartmentstore.com; c/o khols.com, FA 1442950 (Forum June 7, 2012) (“Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under Policy ¶ 4(a) (iii)”); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that respondent’s failure to make active use of its domain name indicated that respondent registered disputed domain name in bad faith).
Finally, because Complainant’s marks are well known and registered in many countries throughout the world, Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time he or she registered the confusingly similar domain names. This knowledge indicates Respondent’s bad faith use and registration. See Carnival Plc v Belize Domain WHOIS Service Lt, FA 997973 (Forum July 17, 2007) (constructive knowledge of mark due to federal registration is evidence of bad faith).
B. Respondent
The Respondent’s Response consists of a brief email reply to the FORUM accompanied by annexures. The email reads:
“Dear [redacted]:
The related documents are in attachment. Please check them for the arbitration. No fees for the arbitration. Thanks.
相关文件在附件，请查收了作为仲裁使用。没有费用为这次仲裁支付。
Best Regrads [sic],
李敏 LiMin
Written works copyright as following:” (sic)
Respondent submits as an annexure to its email Response, a scan of what purports to be a copyright voluntary registration certificate issued to Respondent, Li Min, issued by the municipal Copyright Bureau of Chong Ching City, China, dated September 22, 2017, bearing registration no. 2017-A-00233247. The Chinese-language certificate describes the copyrighted work as the “pin yin”[1] representation of certain Chinese characters.
Although it does not appear from the face of the copyright voluntary registration certificate which combination of “pin yin” letters Respondent sought to register, another annexure to the Response clarifies the question.
An annexure to the Response, in a file named in English: “My explanation about Mo r gan s tan le y”, is informative. Given its apparent relevance to the Respondent’s argument, the text of the annexure (both the Chinese and the English text) is reproduced below verbatim, it reads:
“域名注册中没有对域名有语言的规定和限制，根据汉语拼音的释义，我这边注册的域名意思如下。
Morganstanley 摩根士丹利
汉语拼音：Mo r gan s tan le y
对应汉字： 末日干死谈乐意
末日甘思谈乐意
其中，r 的发音，和s 的发音均对应相应汉字中在这里取的部分字。
汉字发音：此处的Ma 发音— 为第一声，在此处不是发mo / 第二声。
摩根士丹利
释义：
摩根：轻抚孩子
士丹利：有利于使之成为拥有红心的有用之才
解释来源：《新华汉语词典》《中华大字典》均由商务印书馆国际有限公司出版
Because the domain name does [recte] not constrain language and form, according to the explanation of Chinese pinyin, the meaning of the domain are (sic) as following:
Morganstanley 摩根士丹利
Chinese Pinyin: Mo r gan s tan le y
Corresponding Chinese Characters: 末日干死谈乐意
末日甘思谈乐意
The pronunciation r & s take the corresponding Chinese characters here.
Pronunciation of Chinese Character:
The pronunciation of 摩here is “Ma” but not the pronunciation “mo” of that NY Morganstanley company.
Explanation of 摩根士丹利
摩根： Use hand to touch children.
士丹利：Benefit children for owning red heart and be useful.
Explanations are from official dictionaries:<Xinhua Chinese Language Dictionary> <China Great Dictionary>
Which are published by Commercial Pressing (sic) Limited Company.”
Yet another annexure to the Response, in a file entitled in English: “The different expression of words”, which the Panel again sets forth verbatim, reads:
商标Morgan Stanley 是Morgan Stanley 分开的两个英文单词而且没有含义。
我的域名Morganstanley 是合拢的汉语拼音组成的域名，和英文单词不仅意思不同，表现的形式也不一样。
如果Morgan Stanley 翻译成汉语拼音，应该是mo gan s tan li. 比如汉字:末干死谈利。
从它的英文单词的意思，以及它翻译成的汉语拼音到汉字，Morgan Stanley 是和morganstanley 完全不一样的。
我已经提交注册了汉语拼音mo r gan s tan le y 作为商标，符合商标局的规定和流程。不存在和商标Morgan Stanley 同名的情况。
我也已经提交注册汉语拼音mo r gan s tan le y 作为文字作品著作版权，已经获得知识产权保护。
The Brand MORGAN STANLEY is separated into two unkown English words without meaning.
The domain morganstanley here is closing Chinese pinyin totally different from English meaning and the graphic expression of words.
If MORGAN STANLEY is translated in Chinese Pinyin, it should be mo gan s tan li.Take Chinese character as the example：末干死谈利。From the meaning to its
Chinese Pinyin and Chinese characters, all MORGAN STANLEY are totally different from domain mo r gan s tan le y.
I already submitted Chinese pinyin mo r gan s tan le y as the brand, and it meets the criteria and process of registering brand. It is not the same brand as MORGAN STANLEY in English.
I also already submitted the Chinese pinyin mo r gan s tan le y as the written works copyright, which already be protected by intellectual property right.
Brand: MORGAN STANLEY
My Brand: mo r gan s tan le y
My Domain: mo r gan s tan le y
My written works copyright:
Mo r gan s tan le y”.
A further annexure submitted by Respondent, is an on-line trademark application for the “mo r gan s tan le y” hanyu pin yin, to which the “corresponding Chinese characters are 末日干死谈乐意”, which is dated September 19, 2017. The annexure recites Respondent’s name, address, and national identity card number 42050219841017894X, but is unsigned by the “applicant” or “applicant’s representative”, and bears no official seal, stamp or “chop”. The application purports to target classification 36, and refers to insurance information, financial management, artwork appraisals, estate and trust, and investment banking services, among others.
Another of Respondent’s annexures, entitled in English “Screenshot of website”, reads across the top in large English letters: “Mo r gan s tan le y”, followed by a tag line that reads, again in English: “Success starts from here” and “International Leading Platform”.
The main body on the home page of Respondent’s website reads in Chinese:
Mo r gan s tan le y摩根士丹利网站是互联网平台为企业机构提供的品策划与管理商业服务，协助各企业更快推进相关品牌商标拓展企业
The Panel translates this into English, as follows:
“The Morgan Stanley website provides branding strategies and business management services for business enterprises on the Internet platform, assisting them to expand their businesses and promote their related brands and trademarks”.
Sub-pages on Respondent’s website, with titles appearing in English, followed by Chinese, reflect the topics: “『HOMEPAGE手页』，『ABOUTUS关于我们』，『INSURANCE保险』，『FINANCE金融业务』， 『TREASURESVALUATION珍品估价』， 『ESTATE不动产』， 『TRUSTEE收托管理』， and 『CONTACT联系我们』”. Text appearing in the sub-pages is mostly written in Chinese, although substantial portions appear in English and are consistent in their content with the overall offering of brand promotion strategies and management consultant services to enable businesses to grow their markets.
The contact email address provided on Respondent’s website is “contact@morganstanley.ink. The telephone contact number provided “+1 (646) 439-6225, is that for the island of Manhattan, New York City.
C. Complainant’s Additional Submissions
In its Complaint, Complainant set forth a prima facie case that (a) Complainant has rights in its MORGAN STANLEY marks and the disputed domain names are confusingly similar to Complainant’s marks under ¶ 4(a)(i) of the UDRP; (b) Respondent has no legitimate rights or interest in the disputed domain names under ¶ 4(a)(ii) of the UDRP and; (c) Respondent registered and used the disputed domain names in bad faith under ¶ 4(a)(iii) of the UDRP. Because Complainant established a prima facie case under the UDRP, the burden then shifted to Respondent to rebut such a case and show he is making a legitimate and good faith use of the disputed domain name. See Telefonaktiebolaget LM Ericsson v. Andrea Mariotti, DRO2010-0008 (WIPO Dec. 31, 2010). Respondent has failed to rebut this showing.
Point 1 – Single Domain Name Holder and Proceedings in English
Respondent does not dispute that Respondent is the owner of each of the disputed domain names. Nor does Respondent contest Complainant’s request that the proceedings be conducted in English. In fact, Respondent has responded in English. As such, the Panel should find that Respondent owns all the disputed domain names and continue with the proceedings in English.
Point 2 – Respondent’s Chinese Trademark Application and Copyright Registration
Respondent claims he has a Chinese trademark registration for the mark “mo r gan s tan le y.” This claim is false. On September 19, 2017, after this proceeding was filed, Respondent applied to register the mark “mo r gan s tan le y” in China in Class 36 for various financial services, including services identical or highly related to the financial services offered by Complainant. A trademark application confers no rights on Respondent. See Carnegie Fabrics, LLC v. wang Ariel, Ariel, D2017-0560 (WIPO June 21, 2017) (“The trademark application in itself does not create any legitimate rights and interests that the Respondent can rely upon”). The Chinese trademark office has not approved this application, nor is it likely to do so given Complainant’s prior rights in China.
Moreover, under the UDRP, Respondent must show he established legitimate rights in the disputed domain names prior to the time he registered the domain names. See Discovery Communications, LLC v. Tripp Wood, FA 1299987 (Forum Feb. 19, 2010) (“Respondent has not demonstrated that before notice of the dispute he used or made demonstrable preparations to use the domain name or a corresponding domain name in connection with a bona fide offering of goods or services”); Tipo Oil Corp. v. Tosetti, FA 1620120 (Forum June 16, 2015) (no legitimate rights shown where respondent applied to register trademark after notice of complainant’s demand letter). He has failed to meet this burden.
Respondent’s self-serving trademark application clearly was filed specifically for the purposes of these proceedings.
Respondent’s Chinese copyright registration similarly shows he obtained the document well after Complainant filed these proceedings. Moreover, the document does not contain any reference to the Latin characters in the disputed domain names, merely to Chinese characters that do not appear in the disputed domain names.
Nonetheless, even if Respondent could point to legitimate and relevant trademark and copyright certificates, it is well established that the existence of such registrations would not automatically confer upon Respondent rights or legitimate interests in the disputed domain names. “Where the overall circumstances demonstrate that the respondent may have obtained the trademark primarily to circumvent the application of UDRP or otherwise prevent the complainant from exercising its rights, a respondent would be found to lack rights and legitimate interests in the disputed domain name.” FINO Payments Bank Limited v. Sachin Khot, D2017-0927 (WIPO June 27, 2017). Here, it is simply incredulous that Respondent would have chosen a mark or copyright virtually identical to Complainant’s world-famous MORGAN STANLEY Marks, and intend to use the domain names in connection with financial services, other than to try and circumvent the UDRP or otherwise prevent Complainant from exercising its rights.
Point 3 – Respondent’s Website
Respondent submitted a printout of an undated webpage without a URL, presumably to show his intended website for use in conjunction with the disputed domain names. One of the domain names, morganstanley.ink, is listed in the contact section of the webpage.
Consistent with his Chinese trademark application, this webpage shows that Respondent intends to use the disputed domain names in connection with financial services identical or closely related to those services offered by Complainant under a mark nearly identical to Complainant’s MORGAN STANLEY Marks. This is not a legitimate or bona fide use of, and shows bad faith registration and use of, the disputed domain names. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and goodwill surrounding mark as means of attracting Internet users to unrelated business was not bona fide offering of goods or services); Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”); FC Online Marketing, Inc. v. Brett Ray, FA 1643100 (Forum Nov. 19, 2015) (use of confusingly similar domain name “to market, for commercial gain, services similar to those of Complainant,” was not bona fide or legitimate use); Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the … domain name in bad faith pursuant to Policy ¶… 4(b)… (iv) because Respondent is using a domain name that is confusingly similar to the … [complainant’s] mark for commercial benefit by diverting Internet users to the …[respondent’s] website, which sells competing goods and services”).
Point 4 - Pinyin
Respondent claims that the phrase “mo r gan s tan le y” is pinyin for the Chinese characters 末日干死谈乐意 or 末日甘思谈乐意. But this argument does not obviate the confusing similarity since the disputed domain names each use “morganstanley” in Latin characters without spaces and Internet users, many of whom do not speak Chinese, likely will not make any association with pinyin. See Compagnie Générale des Etablissements Michelin v. Tang Tao, D2016-0576 (WIPO Apr. 27, 2016) (argument that “Michelin” in domain name <michelin.tech> was pinyin for 觅车赁did not obviate confusing similarity between domain name and complainant’s MICHELIN mark).
Respondent argues that “mo r gan s tan le y” is pinyin for the Chinese characters 末日干死谈乐意 or 末日甘思谈乐意. This argument fails to show that the Respondent has any legitimate or bona fide rights in the disputed domain names. Even assuming Respondent has correctly shown that “mo r gan s tan le y” is pinyin for the Chinese characters 末日干死谈乐意 or 末日甘思谈乐意, Respondent has not shown that he is commonly known by these Chinese character names. See ASOS plc v. Qin Hua Kun, D2017-1230 (WIPO Aug. 14, 2017) (rejecting respondent’s argument that asos is a pinyin transliteration of a Chinese word where there was “no evidence that the Respondent has ever used the disputed domain name in connection with the meaning of either phrase”); Tyco International Services GmbH v. Zhou Chuanlin, D2017-0056 (WIPO Mar. 1, 2017) (no evidence that respondent was commonly known by pinyin “tyco”). To the contrary, Respondent’s website shows he is using the Latin characters “mo r gan s tan le y.”
Nor has Respondent provided any insight as to the meaning of 末日干死谈乐意 or 末日甘思谈乐意, or show how “mo r gan s tan le y” would be perceived differently than Complainant’s MORGAN STANLEY mark. To the contrary, panels have found that trademarks and their pinyin transliterations are confusingly similar. See, e.g., McDonald's Corporation v. Fundacion Private Whois, D2012-1435 (WIPO Sept. 20, 2012) (disputed domain name was confusingly similar to pinyin transliteration of foreign mark); McDonald's Corporation v. Private Whois mailesong.org, D2012-0481 (WIPO Apr. 26, 2012) (“The disputed domain name is identical to the pinyin phonetic transliteration of the Trade Mark”). Additionally, Respondent’s recently-obtained copyright registration does not show any rights in or significance of the terms 末日干死谈乐意 or 末日甘思谈乐意.
Point 5 – Third Party Trademark Registrations
Respondent points to one foreign third party trademark registration that contains MORGAN STANLEY and was issued well after the date of Complainant’s registrations. A single foreign trademark registration does not obviate Complainant’s rights in its MORGAN STANLEY mark or the confusing similarity between the disputed domain names and Complainant’s registered mark. See Fives Cryomec AG v. Igor Voronin / Internet Invest Limited, D2017-0595 (WIPO June 19, 2017) (evidence of two third party trademark registrations irrelevant to rights and confusing similarity when complainant owned registration of mark); A.B.C. Carpet Co., Inc. v. ABC Carpet and Rug Repair Services, D2011-0773 (WIPO July 28, 2011) (rejecting respondent’s argument that “in view of the multitude of third-party registrations of the Mark ABC, there is no confusing similarity between Respondent's Domain Name and Complainant's Marks”).
Nor does this registration show Respondent has any legitimate right to use Complainant’s mark. See E. Remy Martin & Co v. Chiu Tien Fu, D2011-2159 (WIPO Feb. 13, 2012) (“The Panel would also note whether or not there have been other domain names comprising the Trade Mark registered by third parties is of no relevance to the issues to be determined in this proceeding”). This is especially so where Respondent intends to use the disputed domain names in connection with financial services identical or related to those offered by Complainant. See A.B.C. Carpet Co., Inc. v. ABC Carpet and Rug Repair Services, D2011-0773 (WIPO July 28, 2011).
The other foreign registrations for Chinese characters not at issue in these proceeding are irrelevant.
Point 6 – Former URS Proceedings
Respondent misplaces reliance on the prior order of the Forum dismissing URS FA 1747218 against morganstanley.公司(morganstanley.xn--55qx5d). This dismissal was without prejudice and granted at the request of Complainant pursuant to URS Supp. Rule 12(a) when Complainant discovered the other disputed domain names registered by Respondent and instead filed one UDRP covering all the domains. The prior order has no preclusive effect here. See Van Vleck Homes, Inc. v. Steven Kirk, FA 414680 (Forum Apr. 1, 2005) (party may re-file complaint dismissed without prejudice).
Complainant notes in its Supplemental Submission that Respondent’s Chinese copyright registration was obtained well after Complainant filed these proceedings and does not contain any reference to the Latin characters in the disputed domain names, merely to Chinese characters that do not appear in the disputed domain names.
The Panel agrees with Complainant’s observation, and further finds that if the official pin yin system adopted by the Chinese central government in 1950, is correctly applied to the two (2) series of Chinese characters which, Respondent asserts in the annexures to its Response, provide the basis for its claim of copyright, to wit: 末日干死谈乐意 or 末日甘思谈乐意, the result is not “mo r gan s tan le y”, as Respondent claims, but rather: “mo ri gan si tan le yi”.[2]
The Panel finds that Respondent’s purported copyright registration is predicated on an erroneous application of the official “Hanyu Pin Yin” system recognized by the Chinese government. Respondent’s purported trademark registration application reflects the same erroneous application of Chinese pin yin.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. The Panel notes, however, that the registration information provided by the Registrar for each of the disputed domain names identifies the Respondent, whether by Respondent’s English or Chinese character name, as the Registrant. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has alleged that Respondent controls each of the disputed domain names, and Respondent has not denied this assertion or alleged the contrary.
The Panel finds that Complainant has properly named Respondent in connection with each of the disputed domain names.
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
The Panel finds that Complainant’s trademark registrations conclusively prove Complainant’s rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). Morgan Stanley v. Denve Dallas, FA 1342149 (Forum Oct. 5, 2010).
The disputed domain names each incorporate Complainant’s MORGAN STANLEY mark in whole. The Panel has no difficulty in finding that the disputed domain names are identical or confusingly similar to Complainant’s registered MORGAN STANLEY marks. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004).
The Panel finds that the first element at Policy ¶ 4(a)(i) is satisfied.
Respondent’s belated, and apparently incomplete, attempt to register the mark “mo r gan s tan le y” in China in Class 36 for various financial services, including services identical or highly related to the financial services offered by Complainant confers no rights on the Respondent. See Carnegie Fabrics, LLC v. wang Ariel, Ariel, D2017-0560 (WIPO June 21, 2017).
As is noted in the Panel’s findings of fact above, Respondent’s claim to relevant trademark and copyright certificates are subject to serious question on factual, as well as legal, grounds. Furthermore, even if such were not the case, this would not automatically confer upon Respondent rights or legitimate interests in the disputed domain names. “Where the overall circumstances demonstrate that the respondent may have obtained the trademark primarily to circumvent the application of UDRP or otherwise prevent the complainant from exercising its rights, a respondent would be found to lack rights and legitimate interests in the disputed domain name.” FINO Payments Bank Limited v. Sachin Khot, D2017-0927 (WIPO June 27, 2017).
As Complainant observes, Respondent has failed to provide any insight as to the meaning of 末日干死谈乐意 or 末日甘思谈乐意, or show how “mo r gan s tan le y” would be perceived differently than Complainant’s MORGAN STANLEY mark. Panels have found that trademarks and their pinyin transliterations are confusingly similar. See, e.g., McDonald's Corporation v. Fundacion Private Whois, D2012-1435 (WIPO Sept. 20, 2012).
The Panel finds that the second element at Policy ¶ 4(a)(ii) is satisfied.
There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when he or she chose and registered the disputed domain names. The Panel finds that Respondent chose the disputed domain names because they are confusingly similar to Complainant’s famous marks. Respondent intended to capitalize on that confusion.
The Panel finds that this constitutes evidence of Respondent’s bad faith registration of the disputed domain names. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM); Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005)
While the disputed domain names do not currently resolve to active websites, Respondent’s mere passive holding of the disputed domain names does not show a legitimate use or bona fide offering of goods or services. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006). Respondent submitted a printout of an undated webpage without a URL, presumably to show his intended website for use in conjunction with the disputed domain names. Respondent apparently intends to use the disputed domain names in connection with financial services identical or closely related to those services offered by Complainant under a mark nearly identical to Complainant’s MORGAN STANLEY Marks. This would not be a legitimate or bona fide use of, and does not constitute “preparation” for the legitimate use of the disputed domain names. Rather, the website evidence proves Respondent’s bad faith registration and use of, the disputed domain names. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003).
Complainant has failed to provide any legitimate explanation for registering the disputed domain names, as there is none. The Panel finds that Respondent sought to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY marks. No other conclusion in reasonably available from the evidence. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000).
The Panel finds that the third element at Policy ¶ 4(a)(iii) is satisfied.
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-investmentbank.vip>, <morganstanley.ink>, <xn--morganstanley-nn3xu84h5dgc6r4g0lu84a.club>, <morganstanley-investmentbank.group>, <morganstanley-investmentbank.club>, <morganstanley-global.group>, <xn--morganstanley-go1ug27b2k0a7j7b7lo.xn--55qx5d>, and <morganstanley.xn--55qx5d> domain names be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Panelist
Dated: October 6, 2017
[1] “Pin yin” [拼音], or “Han Yu Pin Yin” [汉语拼音], is the official system in China, adopted in 1950, for spelling out the correct pronunciation of Chinese characters using specified combinations of letters from the English alphabet, accompanied in each instance by one of four tonal symbols.
[2] The Panel refers in this regard to 现代汉语词典XIANDAI HANYU CIDIAN [Modern (Mandarin) Chinese Dictionary] Commercial Press, Hong Kong, 2009.
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