Morgan Stanley v. Zhou Liang
Claim Number: FA2107001956233
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Zhou Liang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host> and <morganstanley.fit>, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2021. The Forum received payment on July 22, 2021.
On July 27 and 28, 2021, Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) confirmed by e-mail to the Forum that the <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host> and <morganstanley.fit> domain names are registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) and that Respondent is the current registrant of the names. 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, which is in Chinese, and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNs Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Chinese, setting a deadline of August 18, 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@<morganstanley.公司, postmaster@morganstanley.xin, postmaster@morganstanley.host and postmaster@morganstanley.fit. Also on July 29, 2021, the English and Chinese language 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 August 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
As noted, the Registration Agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant has requested that the language of the proceeding be English.
The Panel notes that the domain names, other than the “.公司” generic top-level domain (“gTLD”) are in English. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be conversant with English; that there would be no undue prejudice to Respondent if English were the language of the proceeding; and that it would be unnecessarily time-consuming and costly to require Complainant to translate the Complaint into Chinese.
Accordingly, pursuant to Rule 11(a), the Panel determines that the proceeding shall be in English.
A. Complainant
Complainant offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark through registrations of the mark including with the United States Patent and Trademark Office (“USPTO”)). Respondent’s <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host>, and <morganstanley.fit> domain names are virtually identical or confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host> and <morganstanley.fit> domain names as Respondent is not commonly known by the domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent is passively holding the domain names and accordingly is not using the domain names for a bona fide offering of goods or services, nor for legitimate noncommercial or fair use.
The <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host> and <morganstanley.fit> domain names were registered by Respondent in bad faith with actual knowledge of Complainant’s rights in its mark and are being passively used in bad faith because they are likely to cause confusion among Internet users and there is no conceivable way for Respondent to use them without infringement of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the MORGAN STANLEY mark through numerous registrations of the mark, including with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). The Panel finds Respondent’s <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host> and <morganstanley.fit> domain names to be identical to Complainant’s mark as each comprises Complainant’s mark together with an inconsequential gTLD, which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host>, and <morganstanley.fit> domain names were all registered on July 21, 2021, long after Complainant has shown that its MORGAN STANLEY mark had become famous worldwide. In the few days before the domain names were placed under Registrar lock, they did not resolve to active websites.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
As in Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015):
“Complainant’s MORGAN STANLEY marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain names is that Respondent registered the disputed domain names to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks.”
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
The circumstances set out in relation to the second element satisfy the Panel that Respondent registered the domain names in bad faith while fully aware of Complainant’s famous MORGAN STANLEY mark.
The <morganstanley.公司>, <morganstanley.xin>, <morganstanley.host> and <morganstanley.fit> domain names do not resolve to an active website. However, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), there is no conceivable active use that could be made of the domain names that would not amount to an infringement of Complainant’s rights. Accordingly, the Panel finds that Respondent’s passive use of the domain names constitutes use in bad faith.
Complainant has established this element.
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.公司>, <morganstanley.xin>, <morganstanley.host> and <morganstanley.fit> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated August 24, 2021
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