Morgan Stanley v. YIZHOU HE
Claim Number: FA2105001949077
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is YIZHOU HE (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moganstanley.online>, registered with Dreamscape Networks International Pte Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2021; the Forum received payment on May 28, 2021.
On June 7, 2021, Dreamscape Networks International Pte Ltd confirmed by e-mail to the Forum that the <moganstanley.online> domain name is registered with Dreamscape Networks International Pte Ltd and that Respondent is the current registrant of the name. Dreamscape Networks International Pte Ltd has verified that Respondent is bound by the Dreamscape Networks International Pte Ltd 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 June 7, 2021, the Forum served the Complaint and all annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@moganstanley.online. Also on June 7, 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 July 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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. 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
i) Complainant, Morgan Stanley, is an investment bank and financial services company. Complainant has rights in the MORGAN STANLEY mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). The disputed domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, omits the letter “r” and the space, adding the “.online” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and Complainant has not licensed nor authorized Respondent to use the MORGAN STANLEY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent does not make any active use of the domain name. Furthermore, lack of rights and legitimate interests is evidenced by Respondent’s use of typosquatting. In addition, Respondent offered to transfer the domain name to Complainant in exchange for favors whose monetary value is well beyond the cost to register the disputed domain.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent demanded a ransom in exchange for the disputed domain name which far exceeds the costs of registration. Respondent fails to make an active use of the disputed domain name. Respondent’s bad faith is also evident by Respondent’s typosquatting practice. Furthermore, Respondent intentionally caused an initial interest confusion by making use of Complainant’s well-known mark. Lastly, Respondent had constructive and actual knowledge of Complainant’s rights in the MORGAN STANLEY mark based on the fame of the mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on March 28, 2021.
2. The disputed domain name resolves to the registrar’s parking page.
3. Complainant has established rights in the MORGAN STANLEY mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992).
4. Respondent offered to transfer the domain name to Complainant in exchange for favors.
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”).
Complainant claims rights in the MORGAN STANLEY mark through its registration with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because it incorporates Complainant’s mark in its entirety, omits the letter “r” and the space, adding the “.online” gTLD. A domain name can be found confusingly similar to a complainant’s mark when it misspells complainant’s mark by taking out a letter and the spaces in the mark, and adds a gTLD. See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under 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 argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the famous MORGAN STANLEY mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). Here, the WHOIS information identifies “YIZHOU HE” as the registrant. Additionally, Complainant asserts that it has not licensed or authorized Respondent to use the MORGAN STANLEY mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent does not make any active use of the domain name. Passively holding a domain name does not show a legitimate use or a bona fide offering of good and services under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots showing that the resolving website for the disputed domain name lacks any substantive content but is merely the registrar’s parking page. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Furthermore, Complainant contends that Respondent’s lack of rights and legitimate interests is evidenced by Respondent’s use of typosquatting and Respondent’s offer to transfer the domain name to Complainant in exchange for favors whose monetary value was well beyond the cost to register the disputed domain. Taking advantage of typographical errors by misspelling a mark constitutes typosquatting and demonstrates a respondent’s lack of rights or legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Also, A respondent’s offer to sell the domain name for more than out-of-pocket registration cost suggests that the respondent does not have rights or legitimate interests in that domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name). Complainant contends that the disputed domain name constitutes typosquatting. Additionally, Complainant provides screenshots of its correspondence with Respondent, wherein Respondent asks for an exchange of favors such as a formal dinner with Morgan Stanley executives, a photo op and press release, and a meeting with key Morgan Stanley analysts, which Complainant contends to be far more than the registration cost for the disputed domain.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent demanded a ransom which far exceeds the costs of registration in exchange for the disputed domain name. A respondent’s offer to sell the domain name for an excessive price supports a finding of bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The Panel recalls that Complainant provides screenshots of its correspondence with Respondent, whereby Respondent demanded favors such as a formal dinner with Morgan Stanley executives and a meeting with Morgan Stanley analysts, which Complainant regards as more valued than the cost of registering the domain. Therefore, the Panel finds bad faith per Policy ¶ 4(b)(i).”
Additionally, Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent fails to make an active use of the disputed domain name. Complainant provides screenshots showing the disputed domain name does not resolve to an active website, but instead resolves to the registrar’s parking page. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) With over 1,000 offices in over 40 countries, and over 55,000 employees worldwide, Complainant offers global access to financial markets and advice. 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. MORGAN STANLEY has ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for the past two years, and was ranked numbers 26 and 33, respectively, in Brand Finances 2016 and 2017 Banking 500 global brands. As a result of extensive use, promotion, and advertisement, Complainant’s mark is well-known to consumers; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complaint also argues that Respondent registered the disputed domain name with constructive and actual knowledge of Complainant’s rights in the MORGAN STANLEY mark based on the fame of the mark. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see additionally Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant asserts and provides evidence that its MORGAN STANLEY mark has a long and well-established reputation throughout the world. Therefore, the Panel infers, due to the notoriety of Complainant’s mark that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark at the time of registration of the disputed domain name, and thus it finds bad faith registration pursuant 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 <moganstanley.online> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 12, 2021
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