Morgan Stanley v. 李敏 / 李敏
Claim Number: FA1710001754056
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is 李敏 / 李敏 (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-wan.xn--io0a7i>, registered with HiChina Zhicheng Technology Limited.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2017; the Forum received payment on October 16, 2017. The Complaint was received in both Chinese and English.
On October 18, 2017, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <morganstanley-wan.xn--io0a7i> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 October 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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-wan.xn--io0a7i. Also on October 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. 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.
A. Complainant
Complainant 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. Complainant is the owner of the MORGAN STANLEY mark, having registered the mark with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., USPTO—Reg. No. 1,707,196, registered August 11, 1992; SAIC—Reg. No. 607509, registered Aug. 20, 2002). See Compl. Ex. 6. Respondent’s <morganstanley-wan.xn--io0a7i> is confusingly similar to Complainant’s MORGAN STANLEY mark because it incorporates the mark in its entirety, removes the spaces in the mark, adds the generic or descriptive term “wan,” and the addition of the “xn--io0a7i” (translated from the Chinese word for “network”) generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <morganstanley-wan.xn--io0a7i>. Respondent is not licensed or authorized to use the MORGAN STANLY mark. Additionally, Respondent is not commonly known by <morganstanley-wan.xn--io0a7i>, rather WHOIS identifies the Respondent as “li min / 李敏.” See Compl. Ex. 7. Respondent made no bona fide offering of goods or services nor legitimate noncommercial or fair use. Instead, Respondent’s <morganstanley-wan.xn--io0a7i> resolves to a blank, inactive site with no content. See Compl. Ex. 8.
Respondent registered and used <morganstanley-wan.xn--io0a7i> in bad faith. Respondent’s registration of the disputed domain name less than a week after the Forum found Respondent registered and used other domain names in bad faith is evidence of a pattern of bad faith registration. See Compl. Exs. 7 and 10 (comparing WHOIS for <morganstanley-wan.xn--io0a7i> and the Forum’s prior adverse decision ). Further, Respondent’s passive holding of the disputed domain name is evidence of bad faith. See Compl. Ex. 8. Finally, Respondent had constructive notice of Complainant’s rights to the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <morganstanley-wan.xn--io0a7i> on October 8, 2017.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
The Panel further finds that it is appropriate for this proceeding to continue in the English language. Complainant makes a compelling case that Respondent is adequately informed of and knowledgeable of English to make this an appropriate determination.
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.
In view of 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 draw such inferences it 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.”).
The Panel finds that the disputed domain name is confusingly similar to Complaint’s valid and subsisting trademark, MORGAN STANLEY. Complainant has adequately pled it rights and interests in and to this trademark. Respondent arrives at the disputed domain name by taking the trademark in its entirety, deleting the space between “morgan” and “stanley” and adding the generic or descriptive term “wan,” and the addition of the “xn--io0a7i” (translated from the Chinese word for “network”) generic top level domain (“gTLD”). This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Respondent has made no bona fide offering of goods or services nor legitimate noncommercial or fair use. Instead, Respondent’s <morganstanley-wan.xn--io0a7i> resolves to a blank, inactive site with no content. See Compl. Ex. 8.
Complainant asserts Respondent’s <morganstanley-wan.xn--io0a7i> resolves to a blank, inactive page only displaying the words “This site can’t be reached.” See Compl. Ex. 8 (screenshot of the disputed domain name). Complainant further argues there is no indication from the screenshot that Respondent intends to make use of the website.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
Additionally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues Respondent’s history of adverse UDRP decisions is indicative of a pattern of bad faith registrations using the MORGAN STANLEY mark. Evidence of previous adverse UDRP decisions against a respondent can demonstrate a pattern of bad faith registration per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant has provided this Panel with a copy of a UDRP case in which Respondent was found to have registered multiple domain names containing the MORGAN STANLEY mark. See Compl. Ex. 10 (A copy of Morgan Stanley v. li min /李敏, FA1709001747467). Complainant shows that Respondent registered the disputed domain name, <morganstanley-wan.xn--io0a7i>, within one week of that decision. Id; see also, Compl., Ex. 7 (a copy of WHOIS). Therefore, the Panel finds Respondent to have registered the disputed domain name in bad faith as part of a pattern of such bad faith registrations per Policy ¶ 4(b)(ii).
Next, Complainant asserts Respondent registered and used <morganstanley-wan.xn--io0a7i> in bad faith by failing to make active use of the domain name. A respondent’s inactive holding of a domain name can demonstrate its bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”). Here, Respondent’s <morganstanley-wan.xn--io0a7i> resolves into a blank, inactive page which displays the words “This site can’t be reached.” See Compl., Ex. 8. The Panel finds Respondent’s inactive holding of the disputed domain name to be evidence of its bad faith registration and use of the name per Policy ¶ 4(a)(iii).
Finally, the Panel finds that, given the large number of trademark holding by Complainant, the pattern of disruptive registrations currently filed, and the totality of the circumstances, Respondent had actual knowledge of Complainant’s rights and interests in and the trademark MORGAN STANLEY.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
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-wan.xn--io0a7i> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 17, 2017
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