Morgan Stanley v. ning ding / 111112121 / Hu Xiao Juan / Ding Jin Ming
Claim Number: FA2205001996767
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is ning ding / 111112121 / Hu Xiao Juan / Ding Jin Ming (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip>, registered with GoDaddy.com, LLC; 22net, Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2022; the Forum received payment on May 17, 2022. The Complaint was submitted in both Chinese and English.
On May 18, 2022; May 19, 2022, GoDaddy.com, LLC; 22net, Inc. confirmed by e-mail to the Forum that the <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip> domain names are registered with GoDaddy.com, LLC; 22net, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC; 22net, Inc. has verified that Respondent is bound by the GoDaddy.com, LLC; 22net, Inc. 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 23, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 13, 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@ms8858.com, postmaster@coinms.vip, postmaster@mscoinw.com, postmaster@mscoin.vip. Also on May 23, 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 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in the Chinese language, thereby making the language of the proceedings in Chinese.
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 the English language.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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.”
This proceeding relates to more than one domain name. However, Complainant has alleged that the entities which control the domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of that argument, Complainant contends that the domain names resolve to the same or nearly identical resolving website and all were registered within weeks of each other, with most using the same registrar, showing that the domain names are effectively controlled by the same person or entity. Similar evidence has been widely held by panelists to show a single domain name holder.
Accordingly, the Panel finds that the domain names are in effect registered by the same domain name holder. The proceeding may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant is a financial services company. Complainant has rights in the MORGAN STANLEY mark through its registrations with the United States’ Patent and Trademark Office (“USPTO”) (Reg. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Respondent’s <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip> domain names are identical or confusingly similar to Complainant’s mark as they incorporate a common abbreviation of the mark and add various generic words and digits and the “.com” and “.vip” generic top-level domain names (“gTLD”).
Respondent lacks rights and legitimate interests in the <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip> 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 names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead pass off as Complainant and offer competing, fraudulent financial services on the disputed domain names’ resolving websites.
Respondent registered and uses the <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip> domain names in bad faith. Respondent passes off as Complainant and offers competing services on the disputed domain names’ resolving websites. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the financial services industry.
2. Complainant has established its rights in the MORGAN STANLEY mark through its registrations of the mark with the United States’ Patent and Trademark Office (“USPTO”) (Reg. 1,707,196, registered Aug. 11, 1992).
3. Respondent registered the <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip> domain names on April 14, 2022, December 29, 2021, April 28, 2022, and March 2, 2022, respectively.
4. Respondent passes itself off as Complainant and offers competing and fraudulent financial services on the disputed domain names’ resolving websites.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MORGAN STANLEY mark through its registrations with the USPTO (Reg. 1,707,196, registered Aug. 11, 1992). See Compl. Ex. 6. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, as the Panel agrees, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant argues that Respondent’s <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip> domain names are identical or confusingly similar to Complainant’s mark as they incorporate an abbreviated version of the mark and adds various words, digits, and gTLDs to the beginning or end of the mark. Under Policy ¶ 4(a)(i), incorporating an abbreviated version of a mark, specifically the MS abbreviation of the MORGAN STANLEY mark, and adding generic or descriptive words, and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See 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 or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see additionally Morgan Stanley v. Stacy Wilson/hsbc, FA2103001938103 (Forum Apr. 23, 2021) (finding that “the [<msfundservices.com>] domain name is confusingly similar to a mark in which Complainant has rights . . .”). The disputed domain names add the “ms” abbreviation, which the evidence shows is a commonly known abbreviation of MORGAN STANLEY and a variety of words, letters, and digits including the digits “8858”, the word “coin”, the letter “w”, all of which the evidence shows are commonly used in financial transactions and the “.com” and “.vip” gTLDs. Therefore, as the Panel agrees, it finds Respondent’s domain names are confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY mark and to use it in its domain names using the “ms” abbreviation and adding a variety of words, letters, and digits, including the digits “8858”, the word “coin” and the letter “w” to the mark;
(b) Respondent registered the <ms8858.com>, <coinms.vip>, <mscoinw.com> and <mscoin.vip> domain names on April 14, 2022, December 29, 2021, April 28, 2022, and March 2, 2022, respectively;
(c) Respondent passes itself off as Complainant and offers competing and fraudulent financial services on the disputed domain names’ resolving websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information, may demonstrate that a Respondent is not commonly known by the disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS of record identifies Respondent as “ning ding,” “111112121,” “Hu Xiao Juan,” and “Ding Jin Ming.” See Registrar Verification Email. Nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its MORGAN STANLEY abbreviation in the disputed domain names. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names 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 goods and services on the resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain names’ resolving websites, which purport to offer financial services in competition with Complainant’s services. See Compl. Ex. 12. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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 does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), passing off as Complainant and/or hosting competing content on a disputed domain name’s resolving website is generally considered evidence of bad faith disruption 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 notes Complainant’s screenshot of the disputed domain names’ resolving websites, which purport to offer similar investment services under the guise of an association with Complainant. See Compl. Ex. 12. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Under Policy ¶ 4(a)(iii), bad faith actual knowledge may be demonstrated by incorporation of a well-known/registered mark into a disputed domain name, as well as Respondent’s use of the domain name’s resolving website. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). The Panel notes that the disputed domain names incorporate an abbreviation of Complainant’s MORGAN STANLEY mark, as well as Complainant’s screenshots of the disputed domain names’ resolving websites, which feature competing services. See Compl. Ex. 12. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain names with bad faith actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ms8858.com>, <coinms.vip>, <mscoinw.com>, and <mscoin.vip> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: June 16, 2022
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