Morgan Stanley v. Zhi Qiang Yang
Claim Number: FA2206001999558
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Zhi Qiang Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmorganstanleyclientserv.com>, (‘the Domain Name’) registered with West263 International Limited.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2022; the Forum received payment on June 8, 2022. The Complaint was submitted in both Chinese and English.
On June 8, 2022, West263 International Limited confirmed by e-mail to the Forum that the <wwwmorganstanleyclientserv.com> Domain Name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 June 13, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 5, 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@wwwmorganstanleyclientserv.com. Also on June 13, 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 July 11, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 THE PROCEEDINGS
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.
A. Complainant
Complainant is the owner of the well known mark MORGAN STANLEY registered in, inter alia, the USA for financial services with first use recorded as 1935. A member of the Complainant’s group of Companies Morgan Stanley Domestic Holdings Inc is the owner of the mark CLIENT SERV registered in the USA for computer related services with first use recorded as 1999. The Complainant maintains a log in page at www.morganstanleyclientserv.com.
The Domain Name registered in 2022 must be regarded as confusingly similar to the Complainant’s MORGAN STANLEY and CLIENT SERV marks. Adding the generic abbreviation ‘www’ meaning World Wide Web and the gTLD ‘.com’ does not prevent this confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been used for pay per click links to competing services. This is not a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in bad faith confusing internet users and disrupting the Complainant’s business. Typosquatting is also registration and use in bad faith. Use of both Complainant’s marks in a typosquatting registration shows the Respondent had actual knowledge of the Complainant’s marks. The Respondent has been the subject of other adverse decisions under the UDRP for misuse of the Complainant’s trade mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the well known mark MORGAN STANLEY registered in, inter alia, the USA for financial services with first use recorded as 1935. A member of the Complainant’s group of Companies Morgan Stanley Domestic Holdings Inc is the owner of the mark CLIENT SERV registered in the USA for computer related services with first use recorded as 1999. The Complainant maintains a log in page at www.morganstanleyclientserv.com.
The Domain Name registered in 2022 has been pointed to competing pay per click links and appears to be a typosquatting registration. The Respondent has been the subject of other adverse decisions under the UDRP for misuse of the Complainant’s mark.
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 Domain Name consists of the Complainant's MORGAN STANLEY mark (which is registered, inter alia in USA for financial services with first use recorded as 1935), the CLIENT SERV mark (which is registered in the USA for computer related services by a company in the Complainant’s group with first use recorded as 1999), the generic abbreviation ‘www’ and the gTLD ‘.com’.
The Panel agrees that combining two marks associated with the Complainant or members of its financial group does not distinguish the Domain Name from the Complainant's MORGAN STANLEY and CLIENT SERV trade marks pursuant to the Policy. Combining a complainant’s marks does not sufficiently distinguish a disputed domain name from the marks under Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”).
The addition of a generic term and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i).).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to the MORGAN STANLEY and CLIENT SERV marks in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the 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 Respondent has used the Domain Name for links offering competing services not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
The Domain Name also appears to be a typosquatting registration omitting a period highly similar to the Complainant’s url at www.morganstanleyclientserv.com. Typosquatting is also an indication of a lack of rights or a legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing two of the Complainant’s marks and confusingly similar to the Complainant’s url for a log in page maintained by the Complainant.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has registered a domain name containing two of the Complainant’s marks in its entirety and highly similar overall to a url for a log in page maintained by the Complainant. This demonstrate that the Respondent had actual knowledge of the Complainant, its marks, business and services.
Use for competing pay per click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business.see Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
Respondent was previously found to have registered domain names misusing the Complainant’s mark in bad faith under the UDRP appearing to show a pattern of activity. See Morgan Stanley v. Zhi Qiang Yang / DomainAdministrator, FA2203001990336 (Forum May 17, 2022); Morgan Stanley v. Qian Meng Dan / Zhi Qiang Yang / Domain Administrator / shi lei,FA2203001989084 (Forum Apr. 27, 2002); and Morgan Stanley v. Lei Shi / huade wang / Yanli Li / Zhi Qiang Yang / Domain Administrator, FA2201001982501 (Forum Mar. 12, 2022).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Para 4(b) (ii),(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwmorganstanleyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 11, 2022
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