Morgan Stanley v. ZhangBing / Shen Zhen Shi Zhan Lan Ling Yu Ke Ji You Xian Gong Si
Claim Number: FA2101001927733
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is ZhangBing / Shen Zhen Shi Zhan Lan Ling Yu Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyna.com>, registered with Xin Net Technology Corporation.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2021; the Forum received payment on January 8, 2021.
On January 12, 2021, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <morganstanleyna.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 January 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2021 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@morganstanleyna.com. Also on January 14, 2021, 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 February 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
PRELIMINARY ISSUE: SUPPORTED LANGUAGE REQUEST
The relevant Registration Agreement for the at-issue domain is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel may find that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant, while conducting the proceeding in English would not unfairly burden Respondent. Respondent targeted a U.S.-based company by incorporating the Complainant’s famous MORGAN STANLEY mark into the at-issue domain name. Doing so constitutes evidence that Respondent will not be prejudiced if the proceedings were to be conducted in English. See Morgan Stanley v. Peng Bi / Bi Peng, FA1709188 (Forum Feb. 16, 2017) (choosing to conduct the proceedings in English in part because “the disputed domain names contain a famous English language mark). The <morganstanleyna.com> domain itself comprises a top-level which primarily targets English speaking internet users and English based text makes up its second-level. See Textron Innovations Inc. v. xie rui dong, FA1750895 (Forum May 26, 2017) (selecting English as the language of the proceeding in part because the “[r]espondent targeted a U.S.- based company by registering the . . . domain name” and “utilized Anglican characters in its domain”). Further, requiring Complainant to translate all the documents of the proceeding into Chinese would result in the Complainant having to incur additional costs and delay the proceeding, and Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore, in light of all the foregoing, the Panel finds this proceeding should continue in English.
A. Complainant
Complainant contends as follows:
Complainant offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a combination of institutional and retail capabilities.
Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <morganstanleyna.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark as it merely adds the generic term “na” and the gTLD “.com” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <morganstanleyna.com> domain name. Respondent is not commonly known by the MORGAN STANLEY mark or the at-issue domain name and Respondent did not actually engage in any business under the name MORGAN STANLEY or the domain name. Furthermore, Complainant never authorized Respondent to use the MORGAN STANLEY mark. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <morganstanleyna.com> domain name to pass off as Complainant.
Respondent registered and uses the <morganstanleyna.com> domain name in bad faith. Respondent disrupts Complainant’s business by passing off as Complainant and Respondent registered the at-issue domain name with actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark, evidenced by the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MORGAN STANLEY trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MORGAN STANLEY trademark.
Respondent uses the at-issue domain addresses a website that uses the MORGAN STANLEY name and mark and claims “this website it maintained and operated by Morgan Stanley,” listing Morgan Stanley’s email address and telephone number as its own contact information.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its MORGAN STANLEY trademark. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <morganstanleyna.com> domain name contains Complainant’s MORGAN STANLEY trademark less its domain name impermissible space, followed by the letters “na” -with all followed by a domain name-necessary top-level domain name, here “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <morganstanleyna.com> domain name from Complainant’s MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <morganstanleyna.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY trademark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “ZhangBing / Shen Zhen Shi Zhan Lan Ling Yu Ke Ji You Xian Gong Si” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <morganstanleyna.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <morganstanleyna.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <morganstanleyna.com> domain name to address a website that uses the MORGAN STANLEY name and mark and claims “this website it maintained and operated by Morgan Stanley.” The website also lists Complainant’s email address and telephone number as its own contact information and fraudulently lists Morgan Stanley in its copyright notice. Clearly Respondent is attempting to pass itself off as Complainant. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”);
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <morganstanleyna.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar domain name to pass itself off as Complainant. Respondent’s use of the domain name to pretend there is some affiliation between Complainant and Respondent when there is none demonstrates Respondent’s bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Moreover, Respondent registered <morganstanleyna.com> knowing that Complainant had trademark rights in the MORGAN STANLEY mark. Respondent’s prior knowledge is evident from the worldwide notoriety of Complainant’s trademark and from Respondent’s use of Complainant’s trademark and other intellectual property on the <morganstanleyna.com> website. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <morganstanleyna.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering 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 <morganstanleyna.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 10, 2021
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