Morgan Stanley v. Zhichao Yang
Claim Number: FA2206001999991
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstabley.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2022. The Forum received payment on June 10, 2022. The Complaint was received in both Chinese and English.
On June 14, 2022, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <morganstabley.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement, which is in Chinese, 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 17, 2022, the Forum served the Chinese and English language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of July 7, 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@morganstabley.com. Also on June 17, 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 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 PROCEEDINGS
As noted, the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <morganstabley.com> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Although Complainant has not requested that the proceeding be conducted in English, in support of its substantive claims it has cited three cases it brought against Respondent in which, despite the registration agreement being in Chinese, it was determined that English should be the language of the proceeding, namely Morgan Stanley v. Zhichao Yang, FA2102001932877 (Forum March 22, 2021); Morgan Stanley v. Zhichao Yang, FA2102001932874 (Forum March 23, 2021); and Morgan Stanley v. Zhichao Yang, FA2104001940518 (Forum May 5, 2021). Further, the Panel notes that the <morganstabley.com> domain name is in English and resolves to an English language website.
In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Pursuant to Rule 11(a), the Panel also determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Morgan Stanley, operates a full service financial, investment, and wealth management company. Complainant has rights in the MORGAN STANLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <morganstabley.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <morganstabley.com> domain name as it is not commonly known by the domain name and is neither an authorized user nor licensee of the MORGAN STANLEY mark. Respondent does not use the domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, the domain name resolves to a parked website offering third-party links to Complainant’s competitors. The domain name also creates initial interest confusion.
Respondent registered and uses the <morganstabley.com> domain name in bad faith. Respondent has previously registered infringing domain names and has established a pattern of bad faith registration. See Morgan Stanley v. Zhichao Yang, FA2102001932877 (Forum March 22, 2021); Morgan Stanley v. Zhichao Yang, FA2102001932874 (Forum March 23, 2021); and Morgan Stanley v. Zhichao Yang, FA2104001940518 (Forum May 5, 2021).
Complainant’s MORGAN STANLEY mark is so well-known that Respondent could not have registered the <morganstabley.com> domain name for any good faith reason and did so in bad faith with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. The domain name resolves to a parked website hosting links to Complainant’s competitors. This demonstrates bad faith disruption of Complainant’s business and also constitutes typosquatting and generates initial interest confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the MORGAN STANLEY mark through registration with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). The Panel finds Respondent’s <morganstabley.com> domain name to be virtually identical and confusingly similar to Complainant’s mark, as it merely omits from the mark the space between the words and replaces the “N” with a “B” within the word “STANLEY”. These differences are insufficient to distinguish the domain name from the mark. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <morganstabley.com> domain name was registered on September 12, 2020, many years after Complainant has shown that its MORGAN STANLEY mark had become very well-known. It resolves to a website headed “MORGANSTABLEY.COM”, followed by “MORGAN STANLEY – WE ARE MORGAN STANLEY” and a reference to Complainant’s genuine website at “https://www.morganstanley.com/”. Respondent’s website contains links to third-party businesses offering financial services that compete with Complainant’s services.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <morganstabley.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s very well-known MORGAN STANLEY mark when Respondent registered the typosquatted <morganstabley.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstabley.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 13, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page