Morgan Stanley v. Juan Liu
Claim Number: FA2205001995306
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Juan Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyhuaxin.co>, registered with Chengdu West Dimension Digital Technology 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2022; the complaint was received in both Chinese and English. The Forum received payment on May 6, 2022.
On May 9, 2022, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <morganstanleyhuaxin.co> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology 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 May 10, 2022, the Forum served the Chinese and English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 31, 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@morganstanleyhuaxin.co. Also on May 10, 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 June 6, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in MORGAN STANLEY. Complainant holds national registrations for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name 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 and Trademark Office (“USPTO”) as Reg. No. 1,707,196 from August 11, 1992;
2. the disputed domain name was registered on April 8, 2022 and has not been used; 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."
In that regard the Panel notes that the Registration Agreement is in Chinese, thereby making Chinese the language of the proceedings. However, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”)).
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 as it provides proof of its registration of the trademark MORGAN STANLEY with the USPTO, a national trademark authority.
The disputed domain name takes the trademark to which it then adds the word, “huaxin”, and the ccTLD, “.co”. For the purposes of comparison, the ccTLD can be disregarded (see, for example, ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”)). The significance of the added word, “huaxin”, is not entirely clear from the Complaint which states that it is a word which Complainant uses in connection with its services in China. The submission is that “the addition of this term enhances the confusing similarity since Morgan Stanley uses the mark MORGAN STANLEY HUAXIN in China in connection with securities and owns the domain morganstanleyhuaxin.com. That claim is borne out by the evidence but what seems to be missing is an explanation as to the meaning of the word. Instead, the Complaint cites Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding . . . descriptive terms . . . is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i)”) which seems to imply that “huaxin” is descriptive. So far as the Panel can determine, the word appears to be a non-distinctive, “feel good” expression commonly used in connection with corporate or business names in China. In any event the Panel finds the trademark to be the dominant visual and aural part of the composite term and so finds the disputed domain name to be confusingly similar to the trademark.
The Panel 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 name, 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, WIPO Case No. D2000‑0624).
The domain name registrant is “Juan Liu”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. Complainant provides evidence that the disputed domain name resolves to a webpage with no content, which also produces an error message. Inactively holding a disputed domain name is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name. The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was 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, as separate matters, registration and use in bad faith. The Complaint states that marks containing or comprising MORGAN STANLEY have been in use since 1935. In 2020, Complainant’s net revenue exceeded USD48,000,000,000. Prior decisions under the UDRP have recognized that MORGAN STANLEY is a well-known trademark (see, for example, Morgan Stanley v. jorge Stephan, FA 1219168 (Forum Sept. 12, 2008); Morgan Stanley v. Meow, FA 671304 (Forum May 22, 2006); Morgan Stanley v. Albert Jackson, FA 244092 (Forum Apr. 19, 2004).
The Panel has already found the disputed domain name to be confusingly similar to the trademark. There is no apparent reason for Respondent to register the name in good faith since the trademark appears to only refer to Complainant’s business and has no other shown meaning. In the absence of another explanation, the Panel finds that Respondent targeted Complainant’s trademark and business and so finds registration in bad faith (see, for example, Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015), stating that: “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 name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks.”
Further, the Panel accepts that the trademark is well-known. Although the disputed domain name has not been used, the Panel cannot envisage any unauthorized use which would be in good faith. Accordingly, the Panel finds so-called passive holding in bad faith and so finds registration in bad faith in line with the principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <morganstanleyhuaxin.co> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 10, 2022
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