Morgan Stanley v. Johnson Zhang / K H / HK / Hkhkhk
Claim Number: FA2203001986455
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Johnson Zhang / K H / HK / Hkhkhk (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc>, registered with Gname.com Pte. Ltd.; Dynadot, LLC; Realtime Register B.V..
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2022; the Forum received payment on March 1, 2022.
On March 2, 2022; March 3, 2022, Gname.com Pte. Ltd.; Dynadot, LLC; Realtime Register B.V. confirmed by e-mail to the Forum that the <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names are registered with Gname.com Pte. Ltd.; Dynadot, LLC; Realtime Register B.V. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd.; Dynadot, LLC; Realtime Register B.V. has verified that Respondent is bound by the Gname.com Pte. Ltd.; Dynadot, LLC; Realtime Register B.V. 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 March 7, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 28, 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@morgamstaniey.net, postmaster@morgamstaniey.vip, postmaster@morgamstaniey.com, postmaster@morgamstaniey.cc. Also on March 7, 2022, 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 April 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceeding, taking into consideration the particular circumstances. 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). The Panel notes that the disputed domain names are all a misspelled version of a well-known American company name, and determines that the proceeding will be conducted in English.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities that control the disputed domain names are the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant shows that the disputed domain names were registered on the same date, on the same servers, with the same misspelling, the same inactive resolving websites, and three of the disputed domain names have the same email address. The Panel therefore finds that respondents “Johnson Zhang / K H / HK / Hkhkhk” are one person or entity and they will be referred to as “Respondent.”
A. Complainant
1. Respondent’s <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names.
3. Respondent registered and uses the <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names in bad faith.
B. Respondent did not file a Response.
Complainant is a well-known financial services company and holds a registration for the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 1,707,196, registered Aug. 11, 1992).
Respondent registered the <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names on Feb. 20, 2022, and does not make an active use of them.
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 Panel finds that Complainant has rights in the MORGAN STANLEY mark through its registrations with the USPTO. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO).
Respondent’s <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names all use a slight misspelling of Complainant’s MORGAN STANLEY mark. Under Policy ¶ 4(a)(i), incorporating a misspelled version of a domain name along with a gTLD is insufficient in differentiating a disputed domain name from the mark it incorporates. See 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 that Respondent’s disputed domain names are confusingly similar to Complainant’s MORGAN STNALEY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names. Complainant has not authorized or licensed Respondent to use its MORGAN STANLEY mark. The WHOIS of record identifies Respondent as “Johnson Zhang/K H/HK/Hkhkhk.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)
Complainant also argues that Respondent is not using the <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”) Complainant provides screenshots of the disputed domain names’ resolving websites, which feature no content. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names in bad faith by inactively holding their resolving websites. Inactively holding a disputed domain name evinces bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Accordingly, if the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered the <morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names with bad faith actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. The Panel agrees, noting the fame of the MORGAN STANLEY mark, and finds further bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”)
The Panel finds that Complainant has satisfied 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<morgamstaniey.net>, <morgamstaniey.vip>, <morgamstaniey.com>, and <morgamstaniey.cc> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 6, 2022
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