Morgan Stanley v. Zhi Qiang Yang / Domain Administrator / 杨智超 / Host Master / Transure Enterprise Ltd
Claim Number: FA2204001991414
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondents are Zhi Qiang Yang / Domain Administrator / 杨智超 / Host Master / Transure Enterprise Ltd, CN.
DISPUTED DOMAIN NAMES
The domain names at issue are
<morganstableydatasecuritysettlement.com>, <morgabstanleydatasecuritysettlement.com>, <morganstanleydatadecuritysettlement.com>, <morganstanleydataecuritysettlement.com>, <morganstanleydatasecueitysettlement.com>, <morganstanleydatasecuitysettlement.com>, <morganstanleydatasecuresettlement.com>, <morganstanleydatasecuretysettlement.com>, <morganstanleydatasecurirysettlement.com>, <morganstanleydatasecuritiessettlement.com>, <morganstanleydatasecurittsettlement.com>, <morganstanleydatasecurittysettlement.com>, <morganstanleydatasecuritysettlemenr.com>, <morganstanleydatasecuritysettlemetn.com>, <morganstanleydatasecuritysettlemrnt.com>, <morganstanleydatasecuritysettlemwnt.com>, <morganstanleydatasecuritysettllement.com>, <morganstanleydatasecuritysetylement.com>, <morganstanleydatasecuriytsettlement.com>, <morganstanleydatasecuriyysettlement.com>, <morganstanleydatasecyritysettlement.com>, <morganstanleydatasevuritysettlement.com>, <morganstanleydatasrcuritysettlement.com>, <morganstanleydataswcuritysettlement.com>, <morganstanleydayasecuritysettlement.com>, <morganstanleydetasecuritysettlement.com>, <morganstanleydstasecuritysettlement.com>, <morganstanleysatasecuritysettlement.com>, <morganstanlleydatasecuritysettlement.com>, <morganstanlrydatasecuritysettlement.com>, <morganstanlwydatasecuritysettlement.com>, <morgenstanleydatasecuritysettlement.com>, <morgonstanleydatasecuritysettlement.com>, <morgsnstanleydatasecuritysettlement.com>, <wwwmorganstanleydatasevuritysettlement.com>, <moorganstanleydatasecuritysettlement.com>, <moeganstanleydatasecuritysettlement.com>, <morganatanleydatasecuritysettlement.com>, <morgandtanleydatasecuritysettlement.com>, <morganstainleydatasecuritysettlement.com>, <morgansyanleydatasecuritysettlement.com>, <morgantanleydatasecuritysettlement.com>, <motganstanleydatasecuritysettlement.com>, <mprganstanleydatasecuritysettlement.com>, <mrganstanleydatasecuritysettlement.com>, <moranstanleydatasecuritysettlement.com>, <morfanstanleydatasecuritysettlement.com>, <morgansranleydatasecuritysettlement.com>, <morganstanledatasecurityysettlement.com>, <morganstanleydataseccuritysettlement.com>, <morganstanleydatasecuritysettlemebt.com>, <morganstanleydaasecuritysettlement.com>, <morganstanleyatasecuritysettlement.com>, <morganstanelydatasecuritysettlement.com>, <morganstanleydatasecurityettlement.com>, <morganstanletdatasecurirysettlement.com>, <mortgagestanleydatasecuritysettlement.com>, <morganstanleydatasesecuritysettlement.com>, <morganstanleydatasecuritysettlemant.com>, <morganstanleydatasecuritysattlement.com>, <morganstanleysettlementclaim.com> and <morganstanleyhdatasecuritysettlement.com>.
(“Disputed Domain Names”)
The Disputed Domain Names are registered with Sav.Com; Llc - 48; Cloud Yuqu Llc; Chengdu West Dimension Digital Technology Co.; Ltd., Ename Technology Co., Ltd.; Above.Com Pty Ltd.; Ename Technology Co., Ltd.; Above.Com Pty Ltd., Sav.Com, Llc; Cloud Yuqu Llc, and Sav.Com, Llc.
(“Registrars”)
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as the panelist in this proceeding.
Debrett G. Lyons (“Panelist”).
Complainant submitted a Complaint to the Forum electronically on April 7, 2022; the Forum received payment on April 7, 2022.
On Apr 07, 2022; Apr 12, 2022; Apr 18, 2022; May 04, 2022; May 05, 2022; May 10, 2022; May 12, 2022; May 24, 2022 and May 25, 2022, the Registrars confirmed by e-mail to the Forum that the Disputed Domain Names are registered with them and that the named respondents are the current registrants of the Disputed Domain Names. The named Respondents are bound by the Registrars’ registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2022 by which the named respondents could each file a Response to the Complaint, via e-mail to all entities and persons listed on the respondents’ registrations as technical, administrative, and billing contacts, and to their corresponding “postmaster” addresses.
Also on May 26, 2022, the Written Notices of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for a Response, were transmitted to the respondents via post and fax, to all entities and persons listed on the respondents’ registrations as the technical, administrative and billing contacts.
Having received no response from any of the respondents, the Forum transmitted to each of the parties a Notification of Respondent Default.
On June 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a response from any named respondent.
Complainant requests that the Disputed Domain Names be transferred from the respondents to Complainant.
The disputed domain names are not registered to one holder. Paragraph 3(c) of 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.” Nevertheless, Complainant has alleged that the Disputed Domain Names are effectively controlled by a single person or entity, operating under several aliases.
The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
The Complainant points to commonalities shared by the registrations and to other factors which, taken together, provide compelling evidence of Complainant’s assertion of a single controlling entity behind the Disputed Domain Names and underpin the Panel’s finding that these proceedings should continue against the named respondents, hereinafter referring to them collectively as “Respondent”.
The Registration Agreements are all written in Chinese, thereby making the language of the proceedings, in each case, Chinese. The Panel notes that in consequence of several rounds of Deficiency Notifications sent from the Forum to Complainant, the Complaint was filed in Chinese as well as (originally) English. Having taken paragraph 11 of the Rules into full account, the Panel has determined that in the absence of a Response in connection with any of the Disputed Domain Names, these administrative proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in MORGAN STANLEY. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides financial and investment management services by reference to the trademark, MORGAN STANLEY, registered, inter alia, with United States Patent & Trademark Office (“USPTO”) as Reg. No. 1,707,196 from August 11, 1992;
2. the Disputed Domain Names were all registered in 2022 and resolve to webpages with links to miscellaneous third party goods or services; and
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of MORGAN STANLEY with the USPTO, a national trademark authority.
For the purposes of comparison of the Disputed Domain Names with the trademark, the gTLD “.com” can in every case be disregarded. That aside, the Disputed Domain Names take the trademark, or obvious misspellings of the trademark, to which they add either the abbreviation, “www”, or the words or phrases “data/security/settlement/claim”, or various misspellings thereof. None of those additions is of distinctive value and in each case the trademark remains the recognizable part of the domain name. As such, the Panel finds the Disputed Domain Names to be confusingly similar to the trademark (see, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) finding that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy; The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶4(a)(i).”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The names of the underlying domain name holders, as disclosed by the Registrars, are “Zhi Qiang Yang / Domain Administrator / 杨智超 / Host Master / Transure Enterprise Ltd”. None of those names provides any indication that Respondent might be commonly known by any of the Disputed Domain Names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
The evidence is that the Disputed Domain Names resolve to webpages with links to miscellaneous third parties. Complainant submits that Respondent receives click-through fees and that the use is neither a bona fide offering of goods or services, nor otherwise legitimate. The Panel is in agreement and finds that a prima facie case has been made out (see, for example,Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving websites exist for commercial gain in some form or another. In terms of the Policy, the Panel finds that Respondent has intentionally used the Disputed Domain Names to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of those websites (see, for example, Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv)).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 26, 2022
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