Morgan Stanley v. Zhang Zhuo
Claim Number: FA2112001976428
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Zhang Zhuo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleysm.com>, registered with Shanghai Meicheng Technology Information Development Co., 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 December 8, 2021; the Forum received payment on December 8, 2021.
On December 22, 2021, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the Forum that the <morganstanleysm.com> domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the name. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., 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 December 22, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of January 11, 2022 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@morganstanleysm.com. Also on December 22, 2021, the Chinese and English 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 January 17, 2022, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese thereby making the language of the proceedings in Chinese. Complainant has alleged that the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant contends the Respondent is capable of proceeding in English such that the proceedings should go forward in English for the reasons: i) the disputed domain name uses the .com gTLD, which is targeted primarily to English speaking Internet users; ii) the disputed domain name resolves to a website in English, and Respondent’s chat service, previously linked to the disputed domain, which indicates use of English by Respondent; iii) English is a common or ‘connecting’ language in business and travel, including for the purported financial services offered by Respondent; and iv) Complainant would have to translate all the documents of the proceeding into a foreign language, which would result in Complainant having to incur additional costs and delay the proceeding.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant is a global financial services company. Complainant has rights in the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., MORGAN STANLEY, Reg. 1,707,196, registered Aug. 11, 1992). The <morganstanleysm.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the letters “sm”, along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and phishes for user information on the disputed domain name’s resolving website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered and uses the disputed domain name to pass off as Complainant and offer competing services. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Respondent phishes for user information on the disputed domain name’s resolving website.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on December 1, 2021.
2. Complainant has established rights in the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., MORGAN STANLEY, Reg. 1,707,196, registered Aug. 11, 1992).
3. The disputed domain name’s resolving website purports to offer cryptocurrency and other financial services, along with what appears to be a login page is a way for Respondent to collect user 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”).
Complainant claims rights in the MORGAN STANLEY mark through its registrations with the USPTO (e.g., Reg. 1,707,196, registered Aug. 11, 1992). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that <morganstanleysm.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Under Policy ¶ 4(a)(i), adding generic or descriptive words, acronyms, or letters, along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). The disputed domain name incorporates Complainant’s MORGAN STANLEY mark in its entirety and adds the letters “sm” along with the “.com” gTLD. Therefore, the Panel finds that 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 is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence affirming otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Zhang Zhuo”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to offer competing and related services, while phishing for user information is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio-visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website, which purports to offer cryptocurrency and other financial services, along with what appears to be a login page that Complainant argues is a way for Respondent to collect user information. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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. Under Policy ¶ 4(b)(iv), using a disputed domain name to pass off as a Complainant and offer similar or competing services may be considered evidence of bad faith attraction for commercial gain. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which purports to offer cryptocurrency and other financial services, along with what appears to be a login page that Complainant argues is a way for Respondent to collect user information. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a registered/well-known mark into and use of a disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel notes that the MORGAN STANLEY mark is fully incorporated into the disputed domain name, while the resolving website offers similar financial services. Therefore, the Panel infers, due to the fame of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark, and thus it finds Respondent registered the disputed domain name under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith. Under Policy ¶ 4(a)(iii), phishing for user information with a disputed domain name is generally considered evidence of bad faith. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). The Panel recalls that the disputed domain name’s resolving website features what appears to be a login page that Complainant argues is just a scheme to collect user information. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under 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 <morganstanleysm.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 27, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page