Morgan Stanley v. 陈永川
Claim Number: FA2001001878733
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--riqv9gi8ghlnpte.xn--ses554g>, registered with Knet Registrar 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2020; the Forum received payment on January 13, 2020.
On January 15, 2020, Knet Registrar Co.,Ltd. confirmed by e-mail to the Forum that the <xn--riqv9gi8ghlnpte.xn--ses554g> domain name is registered with Knet Registrar Co.,Ltd. and that Respondent is the current registrant of the name. Knet Registrar Co.,Ltd. has verified that Respondent is bound by the Knet Registrar 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 January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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--ses554g. Also, on January 20, 2020, 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 February 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 ISSUES:
a) Internationalized Domain Name
The domain name in dispute, <摩根士丹利.网址>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--riqv9gi8ghlnpte.xn--ses554g>. 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--ses554g> properly in the <摩根士丹利.网址> domain name, it first had to encode it into the <xn--riqv9gi8ghlnpte.xn--ses554g> domain name.
Prior panels have found IDNs and their PUNYCODE translations to be identical. 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). The Panel here finds that the <摩根士丹利.网址> domain name is the same as its PUNYCODE translation, <xn--riqv9gi8ghlnpte.xn--ses554g>, for purposes of this proceeding.
b) Supported Language Request
The Panel notes that Complainant requests the language of this administrative matter 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. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that 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 conducted in English.
A. Complainant
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY and 摩根士丹利 marks (a transliteration of Complainant’s MORGAN STANLEY mark) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 607509, registered Aug. 20, 2002). Respondent’s <摩根士丹利.网址> domain name is identical or confusingly similar to Complainant’s mark as Respondent fully incorporates Complainant’s 摩根士丹利 mark and merely adds the “.网址” (.website in Chinese) generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <摩根士丹利.网址> 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 of the disputed domain name 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 registered and used the <摩根士丹利.网址> domain name in bad faith. Respondent attempts 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, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. In addition, Respondent fails to make an active use of the disputed domain name. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY and 摩根士丹利 marks prior to the registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Morgan Stanley (“Complainant”), of New York, NY, USA. Complainant is the owner of domestic and international registrations for the mark MORGAN STANLEY and variations thereof constituting the MORGAN STANLEY family of marks. Complainant has used the MORGAN STANLEY mark since at least as early as 1935, and its Chinese character counterpart mark since as early as 2003, in connection with its provision of a full range of wealth management services through its unique combination of institutional and retail capabilities. Complainant additionally owns thousands of MORGAN STANLEY domain names which it has registered and began maintaining at least as early as 1996, including its primary website at <morganstanley.com>.
Respondent is 陈永川 (“Respondent”), of China. Respondent’s registrar’s address is listed as Beijing, China. The Panel notes that the <摩根士丹利.网址> domain name was registered on or about January 11, 2020.
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 claims rights in the MORGAN STANLEY and 摩根士丹利 marks (a transliteration of Complainant’s MORGAN STANLEY mark) through its registration of the mark with the USPTO and SAIC. A complainant may establish rights in a mark with its registration at the USPTO and SAIC under Policy ¶ 4(a)(i). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (determining that “Complainant has rights in the KOHLER mark through registration with USPTO and SAIC.”); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Here, Complainant provides the registration certificates for both the MORGAN STANLEY and 摩根士丹利 marks with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992) and SAIC (e.g., Reg. No. 607509 registered, Aug. 20, 2002). The Panel here finds that the Complainant has rights in the MORGAN STANLEY and 摩根士丹利 marks under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <摩根士丹利.网址> domain name is identical or confusingly similar to Complainant’s mark as Respondent fully incorporates Complainant’s 摩根士丹利 mark and merely adds the “.网址” (.website in Chinese) gTLD. A disputed domain name that merely adds a gTLD to a fully incorporated mark may not be sufficiently distinguished from a complainant’s mark under under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel here finds that Respondent’s <摩根士丹利.网址> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <摩根士丹利.网址> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS record identifies the Respondent as “陈永川” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel here finds that Respondent has no rights or legitimate interests in the <摩根士丹利.网址> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <摩根士丹利.网址> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name. Failure to make an active use of a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to be a parked webpage. The Panel here finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <摩根士丹利.网址> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety—Complainant’s MORGAN STANLEY and 摩根士丹利 marks and giving the impression that interested individuals will receive information regarding Complainant, while individuals are actually sent to a blank web page. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent is inactively holding the disputed domain name. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum M Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel again notes that Complainant provides screenshots of the resolving webpage of the <摩根士丹利.网址> domain name which appears to display a parked webpage. The Panel finds that Respondent’s <摩根士丹利.网址> domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Here, Complainant argues that its MORGAN STANLEY marks are well known and registered around the world. Complainant provides screenshots of financial data and business reports to indicate the fame of its mark. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in its MORGAN STANLEY mark under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--riqv9gi8ghlnpte.xn--ses554g> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 2, 2020
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