Morgan Stanley v. 张 大大
Claim Number: FA2111001974405
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is 张 大大 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msbbmsbtc.com>, registered with Name.com, Inc..
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2021; the Forum received payment on November 22, 2021.
On November 23, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <msbbmsbtc.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 November 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@msbbmsbtc.com. Also on November 24, 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 December 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) 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”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). “MS” has been for decades a common initialism for Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field. The disputed domain name <msbbmsbtc.com> is confusingly similar to Complainant’s MORGAN STANLEY mark. Respondent incorporates a well-known abbreviation of Complainant’s MORGAN STANLEY mark, MS, along with generic terms “bb” and “btc” and “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the MORGAN STANLEY mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to impersonate and pass off as Complainant and offer consumers fake investments related to its business.
iii) Respondent registered and used the disputed domain name in bad faith as Respondent attempts to pass off as Complainant and offer consumers fake investments related to Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark due to the longstanding use and fame of the mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on November 10, 2021.
2. Complainant has established rights in the mark MORGAN STANLEY through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992).
3. Complainant is often referred to by its acronym MS. “MS” has been for decades a common initialism for Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field.
4. The disputed domain name’s resolving webpage makes use of Complainant’s MORGAN STANLEY mark and displays investment related content related to Complainant’s business.
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 to have rights in the MORGAN STANLEY mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration for the MORGAN STANLEY mark (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992).
Complainant also argues that the term “MS” is a common acronym for the MORGAN STANLEY because: i) a Google search for webpages that contain both the terms “Morgan Stanley” and “MS” yielded over 5 million results; ii) Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years; iii) Complainant has been the owner of the domain name ms.com for over 25 years which resolves to Complainant’s primary website at www.morganstanley.com; iv) Complainant owns numerous domain names worldwide containing or comprising “MSFUND” or “MSFUNDS,” including msfund.cn,msfund.com, msfund.com.cn, msfunds.cn, msfunds.com, and msfunds.com. all of which were registered before Respondent registered the disputed domain name; and v) Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field.
For the reasons above, the Panel finds that Complainant has established rights in the acronym MS as well as MORGAN STANLEY for the purposes of the Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <msbbmsbtc.com> is confusingly similar to Complainant’s MORGAN STANLEY mark as it incorporates a well-known abbreviation of Complainant’s MORGAN STANLEY mark, MS, along with generic terms “bb” and “btc” and “.com” gTLD. The Panel observes that when a domain name incorporates an acronym of a complainant’s mark, past panels have been reluctant to hold that the domain name is identical or confusingly similar without establishing rights in the acronym. See Soc’y of St. Vincent de Paul v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). As discussed above, the Panel finds that Complainant has established rights in the acronym MS. The disputed domain name adds generic terms “bb” and “btc” and “.com” gTLD to Complainant’s MS mark. Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s MS mark per Policy ¶ 4(a)(i).
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 Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the MORGAN STANLEY and MS marks or register domain name using Complainant’s marks. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 mark, 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 mark 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 “张 大大” and there is no other evidence to suggest that Respondent was authorized to use the MORGAN STANLEY and MS marks or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to impersonate and pass off as Complainant and offer consumers fake investments related to its business. Use of a disputed domain name to pass off as a complainant and offer similar services to consumers is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business), see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving webpage that makes use of Complainant’s MORGAN STANLEY mark and displays investment related content related to Complainant’s business. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and used the disputed domain name in bad faith as Respondent attempts to pass off as Complainant and offer consumers fake investments related to Complainant’s business. Use of a disputed domain name to pass off as a complainant and offer similar services may be evidence of bad faith per Policy ¶ 4(b)(iii) or (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products), see also Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). The Panel recalls that the disputed domain name’s resolving webpage makes use of Complainant’s MORGAN STANLEY mark and displays investment related content related to Complainant’s business. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Next, Complainant contends Respondent registered the disputed domain name in bad faith as Respondent constructive and actual knowledge of Complainant’s rights to the MORGAN STANLEY mark and its acronym MS prior to registration of the disputed domain name based on Complainant’s trademark registrations and the famous nature of the mark. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Complainant’s mark is famous by highlighting that Complainant has ranked among Tenet Partners (f/k/a CoreBrand) 100 Top Brands in the United States for at least the past five years, and was ranked numbers 33 and 34, respectively, in Brand Finances 2019 and 2020 Banking 500 global brands. The Panel infers, due to the notoriety of Complainant’s MORGAN STANLEY and MS marks and the manner of use of the disputed domain name that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the marks MORGAN STANLEY and MS marks at the time of registering the disputed domain name, and thus finds Respondent’s bad faith registration of the disputed domain name 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 <msbbmsbtc.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 21, 2021
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