Morgan Stanley v. fuxinggaokeji
Claim Number: FA1906001850443
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is fuxinggaokeji (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-recruit.com>, registered with Alibaba Cloud Computing (Beijing) 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2019; the Forum received payment on June 30, 2019.
On July 2, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <morganstanley-recruit.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 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 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2019 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@morganstanley-recruit.com. Also on July 9, 2019, 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.
On August 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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: SUPPORTED LANGUAGE REQUEST
Pursuant to UDRP Rule 11(a), the Panel finds persuasive evidence to suggest the likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding is Chinese would unfairly burden Complainant. Additionally, Respondent has failed to offer any objection to going forward in English. Therefore, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <morganstanley-recruit.com> domain name is confusingly similar, as Respondent merely adds a hyphen, the generic or descriptive term “recruit,” and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <morganstanley-recruit.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name.
Finally, Respondent’s <morganstanley-recruit.com> domain name was registered and is being used in bad faith as Respondent inactively holding the disputed domain name. Additionally, the disputed domain name is likely to cause confusion among internet users, and there is no conceivable way for Respondent to use the disputed domain without further infringement of Complainant’s mark. Finally, Respondent had constructive knowledge of Complainant’s rights in its mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the MORGAN STANLEY mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MORGAN STANLEY trademark.
Respondent holds the at-issue domain name inactively.
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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registration for MORGAN STANLEY is conclusive evidence of its rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, Respondent’s <morganstanley-recruit.com> domain name contains Complainant’s entire MORGAN STANLEY trademark less its impermissible space followed by a hyphen suffixed with the suggestive term “recruit” and all followed by the top-level domain name “.com.” The differences between Complainant’s trademark and Respondent’s at-issue domain name fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <morganstanley-recruit.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <morganstanley-recruit.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies its registrant as “fuxinggaokeji.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <morganstanley-recruit.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent holds the at-issue domain name passively. Browsing to the domain name displays what appears to be a parking page. Respondent’s inactive holding of the <morganstanley-recruit.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <morganstanley-recruit.com> domain name was registered and used in bad faith. As discussed below without limitation, circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above concerning confusing similarity, Respondent’s <morganstanley-recruit.com> domain name is, for the purposes of the Policy, confusingly similar to Complainant’s MORGAN STANLEY trademark. The connection between the domain name and Complainant’s trademark is overt thereby creating the likelihood that consumers will confuse the domain name with Complainant’s MORGAN STANLEY trademark. Moreover, Complainant’s mark is unique. There is an obvious and intentional connection between the domain name and Complainant’s trademark. Under the circumstances, the lack of any conceivable benign use of the domain name demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
As also discussed above regarding rights and legitimate interests, Respondent holds the <morganstanley-recruit.com> domain name passively. The at-issue domain name appears to address a parking page. Respondent’s failure to actively use <morganstanley-recruit.com> further indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Additionally, Respondent registered <morganstanley-recruit.com> knowing that Complainant had trademark rights in the SKECHERS trademark. Respondent’s prior knowledge is evident given the notoriety and unique nature of Complainant’s trademark. It follows that Respondent intentionally registered the at-issue domain name so that it might improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and held the <morganstanley-recruit.com>domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley-recruit.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 5, 2019
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