Morgan Stanley v. Data Protected Limited
Claim Number: FA1912001874572
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Data Protected Limited (“Respondent”), represented by William Shen, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.luxe> (the “Disputed Domain Name”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2019; the Forum received payment on December 10, 2019.
On December 12, 2019, the Registrar confirmed by e-mail to the Forum that the <morganstanley.luxe> Disputed Domain Name is registered with the Registrar and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Registrar’s 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 December 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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.luxe. Also on December 16, 2019, 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 from Respondent and determined to be complete on January 6, 2020.
Complainant timely submitted an additional submission on January 6, 2020.
Respondent timely submitted an additional submission on January 6, 2020 and five additional submissions consisting of annexes on January 6, 2020.
The Panel considered the additional submissions and has determined to give them full weight.
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 Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Complainant has also used marks containing or comprising the MORGAN STANLEY Mark in connection with various financial and related services in various jurisdictions worldwide since at least 1935 (collectively hereinafter referred to as the “MORGAN STANLEY Mark”).
Complainant is the owner of the domain name <morganstanley.com>, as well as thousands of variations thereof across a broad spectrum of generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). Complainant first registered <morganstanley.com> in 1996. The domain name resolves to Complainant’s official website, at “www.morganstanley.com”, which website has existed for over twenty years.
Respondent’s <morganstanley.luxe> Disputed Domain Name, registered on November 22, 2019, is confusingly similar to Complainant’s MORGAN STANLEY Mark as Respondent fully incorporates Complainant’s MORGAN STANLEY Mark and merely adds the gTLD “.luxe”.
Respondent has no rights or legitimate interests in the <morganstanley.luxe> Disputed Domain Name as Respondent is not commonly known by the Disputed Domain Name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s MORGAN STANLEY Mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as the Disputed Domain Name resolves to a page with no content, and thus, is passively held.
Respondent registered and used the <morganstanley.luxe> Disputed Domain Name in bad faith. Specifically, the Complainant’s MORGAN STANLEY Mark is contained in the Disputed Domain Name in its entirety. The use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Finally, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the MORGAN STANLEY Mark prior to registering the Disputed Domain Name.
B. Respondent
Respondent registered the <morganstanley.luxe> Disputed Domain Name on November 22, 2019. The Chinese spelling of Respondent’s first name is close to “Morgan” and Respondent contends that Respondent’s nickname is “Morganstanley”.
Respondent registered the <morganstanley.luxe> Disputed Domain Name a year after the “.luxe” gTLD became available. Complainant could have registered it at any point during that time but elected not to.
Respondent alleges that it had never heard of the financial institution Morgan Stanley.
C. Additional Submissions
Complainant states that Respondent provides no support for its argument that it uses the nickname “Morganstanley”. Furthermore, the preparations for use as a personal website has not been demonstrated.
Respondent reiterates that it had no knowledge of the Complainant’s financial institution and therefore has not acted in bad faith.
Complainant holds trademark rights for the MORGAN STANLEY Mark. The Disputed Domain Name is confusingly similar to Complainant’s MORGAN STANLEY Mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Disputed Domain Name and that Respondent registered and is using the Disputed Domain Name in bad faith.
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 Disputed 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 Disputed Domain Name; and
(3) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has shown to have rights in the MORGAN STANLEY Mark based upon registration of the trademark with the USPTO (e.g., U.S. Reg. No. 1,707,196, registered Aug. 11, 1992). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
The Panel also concludes that the <morganstanley.com> Disputed Domain Name is confusingly similar to the MORGAN STANLEY Mark under the Policy
¶ 4(a)(i). The Disputed Domain Name incorporates Complainant’s MORGAN STANLEY Mark in its entirety followed by the “.luxe” gTLD. The addition of a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and a 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).”). Therefore, the Panel finds that Respondent’s <morganstanley.luxe> Disputed Domain Name is identical to Complainant’s MORGAN STANLEY Mark under Policy ¶ (a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name as Respondent has not provided evidence nor proven that it is not commonly known by the Disputed Domain Name, nor has Complainant authorized Respondent to use the MORGAN STANLEY Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the <morganstanley.luxe> Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent holds the Disputed Domain Name passively, which is not deemed a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. The Disputed Domain Name was registered long after Complainant first began using its MORGAN STANLEY Mark. The Panel finds it likely that the Respondent had the Complainant’s MORGAN STANLEY Mark in mind when registering the Disputed Domain Name, although Respondent denies having knowledge of it. However, it is implausible that Respondent had not known of the MORGAN STANLEY Mark since as a result of its extensive use, promotion, and advertisement, Complainant’s MORGAN STANLEY Mark is famous, well known to consumers and registered in many jurisdictions around the world, including in China, where the Respondent resides.
In addition, Respondent’s <morganstanley.luxe> Disputed Domain Name was registered and is used in bad faith as Respondent is holding the Disputed Domain Name passively. Bad faith can be found when a disputed domain name infringes on a famous mark and is then left inactive under Policy ¶ 4(a)(iii). See Alitalia –Line Aerie Italian S.p.A v. Color Digital, WIPO Case No. D2000-1260 (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
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.luxe> Disputed Domain Name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: January 10, 2020
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