Morgan Stanley v. Wen Tao Deng
Claim Number: FA2106001952596
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Wen Tao Deng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyapp.com>, registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2021; the Forum received payment on June 24, 2021.
On June 25, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanleyapp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 June 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2021 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@morganstanleyapp.com. Also on June 28, 2021, 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 July 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant is a global financial services company. Complainant has rights in the MORGAN STANLEY mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. MORGAN STANLEY, Reg. 1,707,196, registered Aug. 11, 1992). Respondent’s <morganstanleyapp.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the generic word “app”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <morganstanleyapp.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead phishes for user information on the disputed domain name’s resolving website.
Respondent registered and uses the <morganstanleyapp.com> domain name in bad faith. Respondent attracts users for commercial gain by distributing malware with the disputed domain name. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Respondent phishes for user information on the disputed domain name’s resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a global financial services company. Complainant has rights in the MORGAN STANLEY mark through its registrations with the USPTO (e.g. MORGAN STANLEY, Reg. 1,707,196, registered Aug. 11, 1992). Respondent’s <morganstanleyapp.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent registered the <morganstanleyapp.com> domain name on June 10, 2021.
Respondent lacks rights and legitimate interests in the <morganstanleyapp.com> domain name. Respondent uses the domain name to phish for user information on the disputed domain name’s resolving website.
Respondent registered and uses the <morganstanleyapp.com> domain name in bad faith. Respondent attracts users for commercial gain by distributing malware with the disputed domain name. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Respondent phishes for user information on the disputed domain name’s resolving website.
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 has rights in the MORGAN STANLEY mark through its registrations with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <morganstanleyapp.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it incorporates the mark in its entirety and adds the generic word “app”, along with the “.com” gTLD.
Respondent is not commonly known by the <morganstanleyapp.com> domain name, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence affirming otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also 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). The WHOIS of record identifies the Registrant as “Wen Tao Deng”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its MORGAN STANLEY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent does not use the <morganstanleyapp.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii). Use of a disputed domain name to phish for user information is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent registered and uses the <morganstanleyapp.com> domain name for bad faith attraction for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to distribute malware shows bad faith attraction for commercial gain. See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Respondent registered the <morganstanleyapp.com> domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent registered and uses the <morganstanleyapp.com> domain name in bad faith under Policy ¶ 4(a)(iii). Phishing for user information with a disputed domain name shows bad faith. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyapp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 6, 2021
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