Morgan Stanley v. zhang wei
Claim Number: FA2009001913774
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is zhang wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgansttanley.com>, registered with Dynadot, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2020; the Forum received payment on September 25, 2020.
On September 28, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <morgansttanley.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 September 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@morgansttanley.com. Also on September 28, 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 October 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
A. Complainant
The 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 trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered August 11, 1992). Respondent’s <morgansttanley.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY mark as it contains the entire MORGAN STANLEY trademark and merely incorporates an additional “t,” the addition of the generic top-level domain (gTLD) “.com,” and the elimination of spaces.
Respondent lacks rights or legitimate interests in the <morgansttanley.com> domain name. Respondent is not commonly known by either the MORGAN STANLEY trademark or the disputed domain name and Respondent has not actually engaged in any business or commerce under the name MORGAN STANLEY or the disputed domain name.
Furthermore, Complainant never authorized Respondent to use the MORGAN STANLEY trademark or the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has not made any active use of the domain name. There is additional lack of lacks rights or legitimate interests as the disputed domain name includes the entire MORGAN STANLEY trademark with an additional letter “t” to make a typographical error.
Respondent registered and uses the <morgansttanley.com> domain name in bad faith. Respondent makes no active use of the domain, Respondent used a common misspelling of Complainant’s trademark, and Respondent registered the disputed domain name to disrupt Complainant’s business by taking advantage of the goodwill and brand recognition associated with Complainant. Furthermore, Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY trademark as evidenced by the famous nature of Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,707,196 MORGAN STANLEY (word), registered August 11, 1992 for services in class 36; and
No. 4,470,389 MORGAN STANLEY (word), registered January 21, 2014 for goods in classes 9 and 16.
The disputed domain name <morgansttanley.com> was registered on September 17, 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”).
The Complainant claims rights to the MORGAN STANLEY trademark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the MORGAN STANLEY trademark (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Therefore, the Panel finds that Complainant has rights in the MORGAN STANLEY trademark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <morgansttanley.com> domain name is identical or confusingly similar to Complainant’s MORGAN STANLEY trademark as it contains the entire trademark and merely incorporates a misspelling by adding an extra “t,” an addition of the generic top-level domain (gTLD) “.com,” and the elimination of spaces. A common misspelling with an added gTLD and eliminated spaces fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”).
Also, for pure technical reasons, a domain name cannot be written as two or more separate words. They have to be written either with hyphens between each word, or – as in this case – as one word. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent lacks rights or legitimate interests in the <morgansttanley.com> domain name as Respondent is not commonly known by either the MORGAN STANLEY trademark or the disputed domain name, Respondent did not actually engage in any business or commerce under the name MORGAN STANLEY or the disputed domain name, and Complainant never authorized Respondent to use the MORGAN STANLEY mark or the disputed domain name.
WHOIS information may be used to determine whether a respondent is 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); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the trademark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the 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 WHOIS information for the disputed domain name lists the registrant as “zhang wei,” and there is no other evidence to suggest that Respondent was authorized to use the MORGAN STANLEY trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name does not resolve to an active webpage. When the disputed domain resolves to an inactive webpage, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). In the present case, the Complainant provides a screenshot of the inactive webpage that resolves from the <morgansttanley.com> domain name. The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent lacks rights or legitimate interests in the <morgansttanley.com> domain name because the domain name includes the entire MORGAN STANLEY trademark while adding the letter “t” to make a typographical error. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii), see Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015). Here the disputed domain name features Complainant’s entire trademark with only an additional “t.” Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <morgansttanley.com> domain name in bad faith as the disputed domain name does not resolve to an active website. A respondent registering a domain name and subsequently failing to make use of the domain name can evidence bad faith registration and use per Policy ¶ 4(b)(iv). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel recalls that Complainant provides a screenshot of the inactive webpage that resolves from the disputed domain name <morgansttanley.com>. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered and uses the <morgansttanley.com> domain name in bad faith as the disputed domain name takes advantage of typographical errors to create initial interest confusion. Intentional typosquatting to create initial interest confusion can evidence bad faith use and registration under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Here the disputed domain name features Complainant’s entire trademark with only an additional “t.” The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent registered the <morgansttanley.com> domain name with actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY trademark based on the famous nature of the trademark. Worldwide prominence of a trademark can show a respondent had actual and constructive knowledge of the mark. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant argues that the famous nature and worldwide prominence of the MORGAN STANLEY trademark demonstrates Respondent’s actual and constructive knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name. Complainant provides Complainant’s company profile from Reuters and Tenet Partners’ brand report that show the fame of the trademark. The Panel agrees, and finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morgansttanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 31, 2020
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