DECISION
Morgan Stanley v. 北京华瑞无线科技有限公司
Claim Number: FA1907001852032
PARTIES
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is 北京华瑞无线科技有限公司 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--riqv9gi8ghlnpte.xn--kput3i>, registered with Beijing Huarui Wireless Technology 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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 15, 2019; the Forum received payment on July 15, 2019.
On July 25, 2019, Beijing Huarui Wireless Technology Co., Ltd confirmed by e-mail to the Forum that the <xn--riqv9gi8ghlnpte.xn--kput3i> domain name is registered with Beijing Huarui Wireless Technology Co., Ltd and that Respondent is the current registrant of the names. Beijing Huarui Wireless Technology Co., Ltd has verified that Respondent is bound by the Beijing Huarui Wireless Technology 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 August 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@xn--riqv9gi8ghlnpte.xn--kput3i. Also on August 1, 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 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PANEL NOTE: SUPPORTED LANGUAGE REQUEST
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Therefore, after reviewing the applicable rules regarding the proceedings of the UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
PRELIMINARY ISSUE: INTERNATIONALIZED DOMAIN NAME
The domain name in dispute, 摩根士丹利.手机, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--riqv9gi8ghlnpte.xn--kput3i>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the <xn--riqv9gi8ghlnpte.xn--kput3i> properly in the 摩根士丹利.手机 domain name, it first had to encode it into the <xn--riqv9gi8ghlnpte.xn--kput3i> domain name.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the 摩根士丹利.手机 domain name is the same as its PUNYCODE translation, <xn--riqv9gi8ghlnpte.xn--kput3i>, for purposes of this proceeding.
PARTIES' CONTENTIONS
A. Complainant
1. Complainant 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. Complainant has rights in the MORGAN STANLEY (translated into Chinese as “摩根士丹利”) through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., MORGAN STANLEY - Reg. No. 1,707,196, registered Aug. 11, 1992) and China’s State Administration of Industry and Commerce (“SAIC”) (e.g., 摩根士丹利 - Reg. No. 775,116, registered Jan. 7, 1996). See Compl. Ex. 6. Respondent’s 摩根士丹利.手机 domain name is confusingly similar to Complainant’s MORGAN STANLEY (“摩根士丹利”) mark as the domain name incorporates the mark in its entirety, along with a “.手机,” which roughly translates to “.cell” or “.mobile,” a generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the 摩根士丹利.手机 domain name. Respondent is not authorized to use any variation of the MORGAN STANLEY mark nor is commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name currently resolves to an inactive website.
3. Respondent registered and uses the 摩根士丹利.手机 domain name in bad faith. Respondent attempts to disrupt Complainant’s business by creating initial interest confusion. Furthermore, Respondent fails to actively use the disputed domain name. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY /摩根士丹利 mark prior to registering the disputed domain name.
B. Respondent
1. Respondent failed to submit a Response.
FINDINGS
1. Respondent’s <xn—riqv9gi8ghlnpte.xn—kput3i> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <xn—riqv9gi8ghlnpte.xn—kput3i> domain name.
3. Respondent registered or used the <xn—riqv9gi8ghlnpte.xn—kput3i> domain name in bad faith.
DISCUSSION
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”).
Identical and/or Confusingly Similar
Complainant claims rights in the MORGAN STANLEY / 摩根士丹利 mark based upon registration of the mark with the USPTO (e.g., MORGAN STANLEY - Reg. No. 1,707,196, registered Aug. 11, 1992) and the SAIC (e.g., 摩根士丹利 - Reg. No. 775,116, registered Jan. 7,1996). See Compl. Ex. 6. Registration of a mark with the USPTO and SAIC is sufficient to establish rights in that mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the MORGAN STANLEY / 摩根士丹利 mark with the USPTO and SAIC is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s 摩根士丹利.手机 domain name is confusingly similar to the MORGAN STANLEY / 摩根士丹利 mark, as the name incorporates the mark in its entirety, along with a “.手机,” a gTLD that roughly translates to “.cell” or “.mobile.” Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore determines the 摩根士丹利.手机 domain name is confusingly similar to the MORGAN STANLEY / 摩根士丹利 mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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”).
Complainant argues that Respondent has no rights or legitimate interests in the 摩根士丹利.手机 domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MORGAN STANLEY / 摩根士丹利 mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “北京华瑞无线科技有限公司,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the摩根士丹利.手机 domain name.
Complainant also asserts Respondent’s inactive holding of the摩根士丹利.手机 domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage. See Compl. Ex. 8. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Complainant asserts that Respondent’s failure to use the 摩根士丹利.手机domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under 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).”). The Panel recalls Complainant’s contention that the domain name does not resolve to an active website. See Compl. Ex. 8. The Panel finds Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's MORGAN STANLEY / 摩根士丹利 mark, it is inconceivable that Respondent could have registered the 摩根士丹利.手机 domain name without actual and constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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.”). The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--riqv9gi8ghlnpte.xn--kput3i> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 3, 2019
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