Morgan Stanley v. TangBangbin / Shenzhen 0420i Co., Ltd.
Claim Number: FA1807001797009
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is TangBangbin / Shenzhen 0420i Co., Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.top>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2018; the Forum received payment on July 17, 2018.
On July 18, 2018, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <morganstanley.top> 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) 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 July 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2018 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.top. Also on July 18, 2018, 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 August 7, 2018.
On August 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant
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. Complainant uses its MORGAN STANLEY mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Respondent’s <morganstanley.top> domain name is identical or confusingly similar to Complainant’s mark because it merely adds the “.top” generic top-level domain (“gTLD”).
Complainant contends Respondent does not have rights or legitimate interests in the <morganstanley.top> domain name. Complainant has not licensed or otherwise authorized Respondent to use its MORGAN STANLEY mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “TangBangbin / Shenzhen 0420i Co., Ltd.” as the registrant. See Compl. Ex. 7. Respondent is not using the <morganstanley.top> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to an inactive website. Further, Respondent offered the disputed domain name for sale.
Complainant contends Respondent registered and is using the disputed domain name in bad faith. Complainant contends Respondent’s bad faith is evidenced by its offer to sell the disputed domain name. Further, Respondent’s use of the <morganstanley.top> domain name disrupts Complainant’s business. Further, Respondent failed to actively use the domain name. Finally, Respondent registered the domain name with full knowledge of Complainant’s rights in the MORGAN STANLEY mark due to the fame of the mark.
B. Respondent
Respondent registered the <morganstanley.top> domain name on July 1, 2018 and contends Respondent’s company is preparing to build a website using the disputed domain name. Respondent contends it has received no benefits from the domain name.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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.
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Since Respondent’s submission was in English, the Panel finds that persuasive evidence has been adduced to suggest that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Complainant contends it established rights in its MORGAN STANLEY mark through registration with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). As such, the Panel holds that Complainant established rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant further contends that Respondent’s <morganstanley.top> domain name is identical or confusingly similar to Complainant’s mark because it merely adds the gTLD “.top.” The addition of a gTLD to a complainant’s mark does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s morganstanley.top> domain name is identical or confusingly similar to Complainant’s mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its MORGAN STANLEY mark. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name per Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <morganstanley.top> domain name lists “TangBangbin / Shenzhen 0420i Co., Ltd.” as the registrant. The Panel concludes that Respondent is not commonly known by the <morganstanley.top> domain name.
Further, Complainant alleges that the <morganstanley.top> domain name resolves to an inactive website. Use of a domain name to resolve to an inactive website may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provided screenshots of the <morganstanley.top> website, which indicate that the site is under construction. See Compl. Ex. 8. The Panel finds that Respondent failed to use the domain name for a permitted use under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of the <morganstanley.top> domain name disrupts Complainant’s business. Disruption of a complainant’s business by diverting Internet users to an inactive webpage may evince a finding of bad faith registration and use. See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business.)
Additionally, Complainant contends that Respondent failed to actively use the domain name. Under Policy ¶ 4(a)(iii), failure to actively use a domain name may evince a finding of bad faith registration and use. 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).”). Complainant provided screenshots of the <morganstanley.top> website, which indicate that the site is inactive. See Compl. Ex. 8. Accordingly, the Panel finds that Respondent failed to actively use the domain name and Respondent engaged in Policy ¶ 4(a)(iii) bad faith registration and use.
Further, Complainant alleges that Respondent registered the domain name with actual and/or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark. Constructive notice of a complainant’s mark is not sufficient to establish bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name 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). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s MORGAN STANLEY mark has created significant good will and consumer recognition around the world and has been used by Complainant since at least 1986. See Compl. p. 4. Therefore, due to the fame of Complainant’s mark, it is not unreasonable to find that Respondent had actual knowledge of Complainant’s rights when the <morganstanley.top> domain name was registered and subsequently used.
Respondent makes no contentions with regards to 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 <morganstanley.top> domain name be TRANSFERRED from Respondent to Complainant.
______________________________
David P. Miranda, Esq., Panelist
Dated: August 20, 2018
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