Morgan Stanley v. DNS Admin / Buntai LTD / shilei / shi lei
Claim Number: FA2207002003019
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is DNS Admin / Buntai LTD / shilei / shi lei (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names The domain names listed in the complaint are <morganstanleydadasecuritysettlement.com>, <morganstanleydatasecuritystatement.com>, <morganstanleydadasecuritysettlment.com>, <morganstanleydadasecuritsettlement.com>, <morganstanleydadasecuritysetlement.com>, <morganstanleydadasettlement.com>, <morganstanleydadasecurityssettlement.com>, <wwwmorganstanleydadasecuritysettlement.com>, and <morganstalnleydatasecuritysettlement.com>, registered with Key-Systems GmbH; Dynadot, LLC; Sav.com, LLC.
For the reasons given below, the Panel finds that the only relevant domain name for this case are <morganstanleydadasecuritysettlment.com>, <morganstanleydadasecuritsettlement.com>, <morganstanleydadasecuritysetlement.com>, <morganstanleydadasettlement.com>, <morganstanleydadasecurityssettlement.com>, <wwwmorganstanleydadasecuritysettlement.com>, and <morganstalnleydatasecuritysettlement.com>.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2022; the Forum received payment on July 5, 2022.
On July 6, 2022, Key-Systems GmbH; Dynadot, LLC; Sav.com, LLC confirmed by e-mail to the Forum that the <morganstanleydadasecuritysettlement.com>, <morganstanleydatasecuritystatement.com>, <morganstanleydadasecuritysettlment.com>, <morganstanleydadasecuritsettlement.com>, <morganstanleydadasecuritysetlement.com>, <morganstanleydadasettlement.com>, <morganstanleydadasecurityssettlement.com>, <wwwmorganstanleydadasecuritysettlement.com>, and <morganstalnleydatasecuritysettlement.com> domain names are registered with Key-Systems GmbH; Dynadot, LLC; Sav.com, LLC and that Respondent is the current registrant of the names. Key-Systems GmbH; Dynadot, LLC; Sav.com, LLC has verified that Respondent is bound by the Key-Systems GmbH; Dynadot, LLC; Sav.com, LLC 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 July 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@morganstanleydadasecuritysettlement.com, postmaster@morganstanleydatasecuritystatement.com, postmaster@morganstanleydadasecuritysettlment.com, postmaster@morganstanleydadasecuritsettlement.com, postmaster@morganstanleydadasecuritysetlement.com, postmaster@morganstanleydadasettlement.com, postmaster@morganstanleydadasecurityssettlement.com, postmaster@wwwmorganstanleydadasecuritysettlement.com, postmaster@morganstalnleydatasecuritysettlement.com. Also on July 7, 2022, the 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. One Respondent did however send a letter to the Forum, jointly with Complainant, see below.
On August 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases because the disputed domain names are nearly identical, were registered within one week of each other and all but one were registered on June 29 and 30, 2022. Additionally, each of the disputed domain names’ resolving websites resolve to click-through parked webpages. Furthermore, two of the named respondents share nearly identical names (“shi lei” and “shilei”) and contact information, while sharing the same email address.
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.”
One of the named respondents and Complainant have sent a joint letter to the Forum , stating, in pertinent part:
Respondent Buntai LTD represents that it owns the following domain names that are subject to the current UDRP: <morganstanleydadasecuritysettlement.com> and <morganstanleydatasecuritystatement.com> (collectively, “Buntai LTD’s Domains”). Buntai LTD further represents that it does not own the remaining domain names subject to this UDRP (the “Other Domains”).
Respondent Buntai LTD disputes Complainant’s UDRP claims, but is willing to transfer Buntai LTD’s Domains to Complainant. Complainant and Respondent Buntai LTD therefore jointly request that the Panel issue a Decision only with respect to the Other Domains and not issue a Decision with respect to Buntai LTD’s Domains, without prejudice to Complainant’s right to refile a complaint in the future.
Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
On the basis of the evidence presented to it, the Panel finds that the <morganstanleydadasecuritysettlement.com> and <morganstanleydatasecuritystatement.com> domain names are not owned by the same entity as the other domain names, whereas all the other domain names are under common control.
Accordingly, the Panel will rule only on the <morganstanleydadasecuritysettlment.com>, <morganstanleydadasecuritsettlement.com>, <morganstanleydadasecuritysetlement.com>, <morganstanleydadasettlement.com>, <morganstanleydadasecurityssettlement.com>, <wwwmorganstanleydadasecuritysettlement.com>, and <morganstalnleydatasecuritysettlement.com> domain names and it will dismiss, without prejudice, the complaint regarding the <morganstanleydadasecuritysettlement.com> and <morganstanleydatasecuritystatement.com> domain names. See Brian Renner v. Contactprivacy.com, FA1007001335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA2111001973471 (Forum Dec 17, 2021).
The cited domain names that are under common control are henceforth referred to as the “disputed domain names” and the registrants as “Respondent”.
A. Complainant
Complainant states that it offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. With over 1,000 offices in over 40 countries, and over 55,000 employees worldwide, Complainant offers truly global access to financial markets and advice. In 2020, Complainant had net revenues of over US$ 48,000,000,000. Complainant claims rights in the MORGAN STANLEY mark through its registration with multiple trademark agencies, including in the United States in 1992. The mark is famous.
Complainant alleges that the disputed domain names are identical or confusingly similar to its MORGAN STANLEY mark as they incorporate the mark (or a misspelling of the mark) in its entirety and merely add (sometimes misspelled versions) of the generic/ descriptive terms “data”, “www”, “security”, “settlement”, and/or “statement”, and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in any way. 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 uses them to host parked webpage with click-through advertisements to products and services, some of which compete with those of Complainant. Respondent also lacks rights or legitimate interests in the disputed domain names because it engages in typosquatting.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to capitalize on the confusing similarity while hosting click-through advertisements. Respondent engages in a pattern of bad faith registration and use while disrupting Complainant’s business. Respondent engages in typosquatting and opportunistic bad faith. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, one named respondent did send a letter to the Forum, jointly with Complainant, see above.
Complainant has rights in the mark MORGAN STANLEY dating back to 1992 and uses it to provide banking and financial services around the world. The mark is famous.
The disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names resolve to parked websites that display click-through advertising links, some of which are to products and services that compete with those of Complainant.
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 disputed domain names incorporate Complainant’s MORGAN STANLEY mark (or a misspelling of the mark) in its entirety and merely add (sometimes misspelled versions) of the generic/ descriptive terms “data”, “www”, “security”, “settlement”, and/or “statement”, and the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the mark it incorporates where it misspells the mark, adds generic or descriptive terms (even if misspelled) and appends a gTLD. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining 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); see also Milliman, Inc v. Domain Administrator, See PrivacyGuardian.org/Zhichao Yang, D2018-2178 (WIPO, Nov. 17, 2018) (finding that the addition of “benefis”, “bennefits”, “bnefits”, and “benefits” does not distinguish a disputed domain name from the complainant’s trademarks and ordering the transfer of <millimanbenefis.com>, <millimanbennefits.com>, <millimanbnefits.com>, and <millimannbenefits.com>). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent engages in typosquatting. The Panel disagrees. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark. Such is not the case for the disputed domain names, which are not likely to be typed instead of Complainant’s mark or company name. See Webster Financial Corporation and Webster Bank, National Association v. Zhichao Yang, FA2110001970133 (Forum Nov. 24, 2021) (“Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or will otherwise confuse the misspelled trademark laden domain name with its target trademark, a web address, an email address, or some other reference to the mark holder.”). Consequently, the Panel will not further discuss the allegation of typosquatting.
Complainant has not licensed or otherwise authorized Respondent to use its MORGAN STANLEY mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may show that a Respondent is not commonly known by a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information identifies the registrants as “shilei / shi lei”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The resolving websites are parked webpage with click-through advertisements, some to products and services that compete with those of Complainant. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host a parked webpage with click-through advertisements is not a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See 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). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving websites are parked pages with click-through advertisements to third-party websites which are both related and unrelated to Complainant’s business. Under Policy ¶ 4(b)(iv), using a disputed domain name to display click-through advertisements is evidence of bad faith registration and use. See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Therefore the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant cites UDRP cases in which Respondent has been found to have engaged in bad faith registration and use. Under Policy ¶ 4(b)(ii), a pattern of bad faith registration and use may be established by a respondent being named as such in previous UDRP proceedings, and where there were findings of bad faith. See Greektown Casino, LLC v. Daniel Kirchhof c/o Unister GmbH, FA1308001513182 (Forum Sept. 17, 2013) (“The Panel finds that Respondent’s implication in a pattern of bad faith use and registration serves as evidence of Policy ¶ 4(b)(ii) bad faith use and registration in the instant proceeding as well.”). Thus the Panel finds that Respondent engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the fact that numerous domain names contain either Complainant’s mark, or a misspelling of the mark, indicates that Respondent knew of Complainant’s mark when registering the disputed domain names. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel dismisses, without prejudice, the Complaint against the <morganstanleydadasecuritysettlement.com> and <morganstanleydatasecuritystatement.com> domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED for the other domain names.
Accordingly, it is Ordered that the <morganstanleydadasecuritysettlment.com>, <morganstanleydadasecuritsettlement.com>, <morganstanleydadasecuritysetlement.com>, <morganstanleydadasettlement.com>, <morganstanleydadasecurityssettlement.com>, <wwwmorganstanleydadasecuritysettlement.com>, and <morganstalnleydatasecuritysettlement.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 9, 2022
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