Morgan Stanley v. Ni Made
Claim Number: FA1006001328822
Complainant is Morgan
Stanley (“Complainant”), represented by Eric J. Shimanoff, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanleywealthmanagement.com>, registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2010. The Complaint was submitted in Chinese and English language.
On June 12, 2010, Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. confirmed by e-mail to the National Arbitration Forum that the <morganstanleywealthmanagement.com> domain name is registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. and that Respondent is the current registrant of the name. Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. has verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 18, 2010, the Forum served the Complaint and all Annexes, including both a Chinese and English language Written Notice of the Complaint, setting a deadline of July 8, 2010 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@morganstanleywealthmanagement.com. Also on June 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
FACTUAL
AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: (ICANN Rule 3(b)(ix))
a. Procedural Background and Cyberflight
Issues.
i. Complainant printed out the WhoIs information for the subject domain name on May 21, 2010, which revealed that the registrant of the domain name was Bruce Molsky.
ii. At approximately 10:58 a.m. E.D.T. on June 8, 2010, complainant verified that the WhoIs information for the subject domain name still indicated Bruce Molsky as the registrant.
iii. At approximately 10:59 a.m. E.D.T. on June 8, 2010, the undersigned served copies of the original complaint in both English and Chinese (and accompanying exhibits and transmittal sheets) on Bruce Molsky, via the email address listed in the WhoIs information, darkbluebruce@gmail.com.
iv. At approximately 11:11 a.m. E.D.T. on June 8, 2010, the undersigned electronically filed the complaints, transmittal sheets and exhibits in this proceeding with the National Arbitration Forum.
v. At approximately 11:50 p.m. E.D.T. on June 8, 2010, the National Arbitration Forum sent notice to the undersigned that the subject domain name dispute had been entered into its system and was assigned case number FA 1328823.
vi. At approximately 1:42 p.m. E.D.T. on June 14, 2010, the National Arbitration Forum sent notice to the undersigned that the WhoIs information for the subject domain name no longer indicated Bruce Molsky was the registrant thereof.
vii. Immediately thereafter, the undersigned confirmed that, on June 12, just four days after the original complaint was filed and served on Bruce Molsky, the WhoIs information for the registrant had changed from Bruce Molsky to Ni Made.
viii. Complainant asserts that, although the registrant information in the WhoIs database changed three days after the filing of the original complaint, the true owner of the domain name has not changed and that Bruce Molsky and Ni Made are simply aliases for the true owner of the domain name.
ix. Indeed, a reverse WhoIs search for Ni Made, using the email address rouchang@gmail.com shows that Ni Made is associated with the telephone number +86 13585827900, which is the same telephone number as Bruce Molsky, the registrant prior to filing.
x. This evidence of identical telephone numbers between the current and prior registrants shows that Bruce Molsky and Ni Made are merely aliases for the true owner of the domain name, which did not change subsequent to the filing and service of the complaint. See FMTM Distribution Limited v. Frnack Muller, D2005-0708 (WIPO Aug. 24, 2005) (“the history of registration of the domain name strongly suggests a link between the Respondent and the previous two registrants. In particular, they all share the same phone number”); The American Automobile Association, Inc. v. greate echo ltd., faceidea ltd, D2010-0390 (WIPO May 9, 2010) (treating as related current and prior registrants who shared the same email address); see also Shaw Industries Group Inc. Columbia Insurance Company v. Adminstrator, Domain, D2007-0583 (WIPO June 21, 2007) (finding bad faith shown by adverse decision against party who had same telephone number as respondent in that case; “Whilst the PO Box number in those details is slightly different, the fact that the same telephone number is used, indicates at least some connection between the registrants”).
xi. Thus, this is a clear case of cyberflight and the actions of both the past and current registrants are relevant to the determination of this domain name dispute . See Tomas Sziranyi v. RegisterFly.com, D2006-0320 (WIPO May 29, 2006) (defining “cyberflight” as “a case in which the name of the Registrant appears to be new but where the Registrant is in reality the same as the previous”; in case of cyberflight, “the acts of the previous Registrant may be taken into account by the Panel when deciding the case”).
b. The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i)).
i. Complainant,
Morgan Stanley, offers a full range of financial and investment and wealth
management services to a full range of clients through a unique combination of
institutional and retail capabilities.
Through this unique combination of institutional and retail capabilities,
Complainant is able to offer a full range of financial and investment services
to a full range of clients. With over
600 offices in 37 countries, including in the
ii. Morgan Stanley is the owner of the
MORGAN STANLEY family of marks, which represent some of the most famous marks
in the financial world. Complainant owns
registrations of the MORGAN STANLEY marks in countries all over the world,
including the
iii. Complainant is also the owner of the top level domain names
MORGANSTANLEY.COM and MORGANSTANLEY.NET, as well as numerous variations thereof
in the .com, .net and other gTLDs and numerous similar country code domain name
registrations. Complainant registered
the MORGANSTANLEY.COM domain name in 1996.
iv. Respondent is the owner of the domain name MORGANSTANLEYWEALTHMANAGEMENT.COM. The domain name, which incorporates Complainant’s MORGAN STANLEY mark in whole, must be deemed virtually identical or confusingly similar to Complainant’s registered MORGAN STANLEY marks. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
v. Respondent’s
domain name features Complainant’s MORGAN STANLEY mark in its entirety and
merely adds the generic or descriptive words “wealth management.” The addition of generic or descriptive words,
especially words such as “wealth management” that describe Complainant’s
services, to Respondent’s domain name does nothing to distinguish Respondent’s
domain name from Complainant’s mark. See
Morgan Stanley v. Israrul Hasan c/o
vi. The addition of the gTLD “.com” is irrelevant in
distinguishing a disputed domain from a registered mark. See Morgan Stanley v. Morgan
Stanley, FA 1169733 (Nat. Arb. Forum May 3, 2008) (finding the addition of the gTLD “.com” irrelevant for purposes of
distinguishing a disputed domain name from an established mark because every
domain must contain a top level domain name).
c. Why
Respondent should be considered as having no rights or legitimate interests in
respect of the domain name that is the subject of the Complaint. (ICANN
Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii)).
i. Upon
information and belief, neither MORGAN STANLEY nor
MORGANSTANLEYWEALTHMANAGEMENT.COM are part of Respondent’s personal name,
which, according to the WhoIs searches for the past and current registrants of
Respondent’s domain name, is Bruce Molsky or Ni Made. Additionally, upon information and belief,
Respondent does not actually engage in any business or commerce under the name
MORGAN STANLEY or MORGANSTANLEYWEALTHMANAGEMENT.COM and Respondent is not
commonly known by either of those names.
See SPTC, Inc. v. Bonanzas.com, Inc., FA
409895 (Nat. Arb. Forum Mar. 14, 2005) (no rights or legitimate interest
in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by
SOTHEBY’S name); Pfizer Inc., and Pfizer Enterprises SARL v. Domain Purchase, FA 328187
(Nat. Arb. Forum Nov. 3, 2004) (no rights or legitimate interest in domain name
DETROL.ORG because respondent had not offered any evidence and there was no
proof suggesting that it was commonly known by the DETROL.ORG domain name).
ii. Respondent
is not a licensee of Complainant, nor has Respondent ever been authorized by
Complainant to register or use the MORGAN STANLEY marks or domain name
MORGANSTANLEYWEALTHMANAGEMENT.COM.
Indeed, Respondent has no relationship whatsoever to Complainant. See Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where Respondent was not a licensee of complainant).
iii. Respondent is
not using the disputed domain name in connection with any bona fide offering of
goods and services. The domain name
resolves to a “parking” website containing links to third-party businesses
offering services that compete with Complainant’s services. Such parking and linking to competitor
websites is not a legitimate or bona fide use of a domain name. See
iv. Moreover, Respondent is most likely receiving click-through fees by using the disputed domain name in this manner, which also is not a bona fide offering of goods and services under Paragraph ¶4(c)(i) of the Policy. See Russell Frey, d/b/a edHelper v. Glenn Scott, FA 1291225 (Nat. Arb. Forum Dec. 17, 2009) (panel held that respondent was likely profiting through receipt of click-through fees by use of disputed domain name EHELPER.COM to resolve to website containing links to third-party sites in competition with complainant and respondent’s use was neither bona fide offering of goods and services under Policy ¶4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
v. Also, Respondent’s parking webpage offers the domain name for sale, which is not a legitimate or bona fide use of a domain name. See Microgaming Software Systems Limited v. Jumbo Domains, D2008-1918 (WIPO Feb. 10, 2009) (parking and offering domain name for sale was not bona fide offering of goods or services); Deutsche Telekom AG v. Domain Admin, D2008-0625 (WIPO June 19, 2008) (same); Meriter Health Services, Inc. v. Sagamatha LP JJ Monte, FA 1176767 (Nat. Arb. Forum May 20, 2008) (same); Veolia Environnement v. Domains by Proxy, Inc. / Bethesda Properties LLC, D2008-0252 (WIPO Apr. 16, 2008) (“fact that the disputed domain name is parked with Sedo and is offered for sale [is] inconsistent with rights or legitimate interests in favour of the Respondent”).
vi. Lastly, Respondent
does not have any legitimate rights in the domain name, given the prior use and
registration of Complainant’s MORGAN STANLEY marks by Complainant and its
affiliates and predecessors-in-interest.
Complainant’s prior use and registration of such marks
give Respondent actual, or at a minimum constructive, knowledge of such use and
registration. See Morgan
Stanley v. Chan, FA 244123 (Nat. Arb. Forum Apr. 23, 2004) (respondents
likely had knowledge of complainant’s MORGAN STANLEY marks prior to
registration of domain name due to complainant’s “long-standing use and fame”
of marks, and fact that marks were registered with USPTO provided constructive
notice to respondent of complainant’s rights in MORGAN STANLEY marks); Orange
Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s . . . mark is listed on the Principal Register of the USPTO, a
status that confers constructive notice on those seeking to register or use the
mark or any confusingly similar variation thereof”).
d. Why the domain name should be considered as having been registered and used in bad faith. (ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii)).
i. It is clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s MORGAN STANLEY marks. Complainant has a long and well established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world. There can be no doubt that Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered its domain name, and in fact chose the domain name because it was confusingly similar to Complainant’s well-known mark and intended to capitalize on that confusion to attract Internet users to its webpage. This alone constitutes evidence of bad faith. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Nat. Arb. Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM); Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith”).
ii. Respondent’s bad faith registration and use is further evidenced by the fact that Respondent is offering the domain name for sale. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); Deutsche Telekom AG v. Domain Admin, D2008-0625 (WIPO June 19, 2008) (same).
iii. Respondent’s domain name resolve to a website that provide
links to commercial websites that offer competing services to Complainant’s
services. This also is strong evidence
of bad faith. See Morgan Stanley v. Ke Zhao, FA 1317816 (Nat. Arb. Forum May 17, 2010)
(“The Panel finds that Respondent’s registration and use of the disputed domain
name constitutes bad faith under Policy ¶4(b)(iii) because Respondent’s
disputed domain name diverts Internet users seeking Complainant’s services to
the services of Complainant’s competitors thereby creating a disruption to
Complainant’s business”); Morgan Stanley v. Domain Park Ltd., FA 1045852 (Nat. Arb. Forum Sep’t 10, 2007)
(finding domains were registered and used in bad faith where they resolved to parked web pages that contain links to
third-party sites, some of which offered services that competed with
Complainant’s services).
iv. Presumably, Respondent receives a financial benefit in the form of click-through fees from these competitors of Complainant, a further indication of bad faith. See Enterprise Rent-A-Car Company v Whois Service c/o Belize Domain WHOIS Service, FA 992206 (Nat. Arb. Forum June 29, 2007) (receipt of click-through fees is evidence of bad faith); Morgan Stanley v. Ke Zhao, FA 1317816 (Nat. Arb. Forum May 17, 2010) (“In this case the Panel presumes that Respondent is collecting click-through fees and is attempting to profit by creating a likelihood of confusion between the Complainant’s MORGAN STANLEY mark and the confusingly similar disputed domain name”).
v. Nonetheless,
even if Respondent does not receive click-through fees and it was the
Registrar, and not the Respondent, who, pursuant to the “parking” agreement
between the Respondent and Registrar, generated the links to third party
competitors of Complainant, Respondent still acted in bad faith because she
allowed “the disputed domain name to be used to attract, for commercial gain,
Internet users who may be confused as to Complainant’s affiliation with those
sites.” Discovery
Communications, LLC v. Tripp Wood, FA 1299987 (Nat. Arb. Forum Feb.
19, 2010) (“a respondent engages in bad faith registration and use when the
respondent has authorized the use of the parking service and thus condoned its
use of the disputed domain name”); see also St. Farm Mutual
Auto. Insr.
vi. Additionally, this
case appears to be the latest example of Respondent’s cybersquatting
activity. A reverse WhoIs search for
Bruce Molsky reveals that, using that alias, Respondent has registered other
domain names that are confusingly similar to well known and famous marks such
as ELIZABETH ARDEN and YSL, to which Respondent has no obvious connection. A reverse WhoIs search for Ni Made reveals
that, using that alias, Respondent has registered other domain names that are
confusingly similar to well known and famous marks such as DIESEL, DOLCE &
GABBANA, GIVENCY, HUGO BOSS and NIKE, to which Respondent has no obvious
connection.[2] These registrations demonstrate that
Respondent has engaged in a pattern of cybersquatting, which is unequivocal
evidence of bad faith. See Armstrong
Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug.
17, 2000) (finding that the respondent violated Policy ¶4(b)(ii)
by registering multiple domain names that infringe upon others’ famous and
registered trademarks); Am. Online, Inc. v. iDomainNames.com, FA 93766
(Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern
of conduct where the respondent registered many domain names unrelated to its
business which infringe on famous marks and websites).
vii. Also, there is at least one reported decisions adverse to Respondent operating under an alias, reported at Morgan Stanley v. Ke Zhao, FA 1317816 (Nat. Arb. Forum May 17, 2010) (MORGANSTANLEYHEDGEFUNDS.COM transferred), which is further evidence of bad faith. See Martin H. Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007 (prior adverse UDRP decisions evidence of bad faith); Citigroup Inc. v. domains Ventures, FA 758967 (Nat. Arb. Forum Dec. 20, 2006) (same). Although the name of the respondent in that decision, Ke Zhao, is different that the registrant here, review of the WhoIs information for Ke Zhao and Bruce Molsky and the reverse WhoIs information for Ni Made shows that they all have identical telephone numbers, namely, +86 13585827900. Moreover, the reverse WhoIs report for Ni Made also shows that Ke Zhao has utilized the same email address as Ni Made, namely, rouchang@gmail.com, and the name Ke Zhao regularly appears on the report for Ni Made. Additionally, the day after the original complaint was filed and served, the undersigned received an email from the Legal Department at Haodomains LLC, stating it had authority over the subject domain name at issue in this proceeding. Further investigation revealed that Haodomains LLC is owned by Ke Zhao and has the same telephone number as respondent here (+86 13585827900) and as the respondent Ke Zhao in decision FA 1317816 (as well as the same telephone number as the respondents in Proceeding Nos. FA 1328821, FA 1328823 and FA 328819).[3] These connections are more than sufficient to impute the prior bad faith of Ke Zhao in decision FA 1317816 to the Respondent here. See Shaw Industries Group Inc. Columbia Insurance Company v. Adminstrator, Domain, D2007-0583 (WIPO June 21, 2007) (finding bad faith shown by adverse decision against party who had same telephone number as respondent in that case; “Whilst the PO Box number in those details is slightly different, the fact that the same telephone number is used, indicates at least some connection between the registrants”); see also FMTM Distribution Limited v. Frnack Muller, D2005-0708 (WIPO Aug. 24, 2005) (“the history of registration of the domain name strongly suggests a link between the Respondent and the previous two registrants. In particular, they all share the same phone number”); The American Automobile Association, Inc. v. greate echo ltd., faceidea ltd, D2010-0390 (WIPO May 9, 2010) (treating as related current and prior registrants who shared the same email address).
viii. Additionally, the fact that, immediately after it was served with the original complaint, the owner of the subject domain name changed the WhoIs information, which resulted in a delay of these proceedings, otherwise known as cyberflight, is further evidence of bad faith. See The American Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business, D2010-0319 (WIPO May 12, 2010) (cyberflight is evidence of bad faith); The American Automobile Association, Inc. v. greate echo ltd., faceidea ltd, D2010-0390 (WIPO May 9, 2010) (“cyberflight supports an inference of bad faith”); Starline Publications, Inc. v. Gioacchino Zerbo, D2008-1822 (WIPO Jan. 21, 2009) (“Cyberflight is in and of itself an indication of both bad faith registration and use under paragraph 4(b) of the Policy”).
ix. Finally, because
Complainant’s marks are well known and registered in many countries throughout
the world, including the
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, has over 600 offices in 37
countries offering financial, investment, and wealth management services to
clients worldwide. Complainant holds
numerous trademark registrations for its MORGAN STANLEY family of marks with
both the United States Patent and Trademark Office (“USPTO”) and
MORGAN
MORGAN
CLIENT LINK
MORGAN
VISION
MORGAN
ACCESS
MORGAN
INVESTOR SYTLES
MORGAN
CLIENTONE
MORGAN
CLIENTONE
MORGAN
MORGAN
Respondent, Ni Made, registered the disputed domain name on April 7, 2010. The disputed domain name resolves to a parked website that contains commercial links to third-party websites offering financial services in direct competition with Complainant. Respondent’s disputed domain name displays a generic offer to sell the disputed domain name to the public on the 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts rights in its MORGAN STANLEY family of marks based on its extensive trademark registrations with both the USPTO and SIPO:
MORGAN
MORGAN
CLIENT LINK
MORGAN
VISION
MORGAN
ACCESS
MORGAN
INVESTOR SYTLES
MORGAN
CLIENTONE
MORGAN
CLIENTONE
MORGAN
MORGAN
The Panel finds Complainant’s numerous trademark registrations are sufficient to establish Complainant’s rights in its MORGAN STANLEY mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant asserts Respondent’s <morganstanleywealthmanagement.com>
is confusingly similar to
Complainant’s MORGAN STANLEY mark.
Respondent’s disputed domain name incorporates the entirety of
Complainant’s MORGAN STANLEY mark after removing the space separating the terms
of the mark and adds the descriptive terms “wealth” and “management” and the
generic top-level domain (“gTLD”) “.com.”
The Panel finds alterations of this nature are not sufficient to
distinguish the disputed domain name from Complainant’s mark. See
Bond & Co. Jewelers, Inc. v.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant asserts Respondent does not have rights and legitimate interests in the disputed domain name. Policy ¶4(a)(ii) requires that Complainant establish a prima facie case in support of its assertions before the burden will shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel finds that based on the arguments made in the Complaint, Complainant has established a prima facie case. Respondent has failed to submit a Response to these proceedings from which allows the Panel to assume the truth of Complainant’s allegations. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel will review the record in light of the factors outlined in Policy ¶4(c) to determine whether Respondent possesses any rights or legitimate interests in the disputed domain name.
The WHOIS information indicates that the registrant of the disputed domain name is “Ni Made.” Complainant claims Respondent does not engage in any business or commerce under the name MORGAN STANLEY or the <morganstanleywealthmanagement.com> domain name. Complainant further claims Respondent is not a licensee of Complainant and Complainant never authorized Respondent to register or use its mark. Based on Complainant’s assertions, as well as the WHOIS information, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent is not using the disputed
domain name to promote its rights and legitimate interests. Respondent’s disputed domain name resolves to
a parked website that displays links to Complainant’s competitors in the
financial services industry. The Panel
finds Respondent’s use of the disputed domain name for such a purpose is
neither a bona fide offering of goods
and services pursuant to Policy ¶4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005)
(finding that the respondent’s use of the <expediate.com> domain name to
redirect Internet users to a website featuring links to travel services that
competed with the complainant was not 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)); see
also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that the respondent was not using the <tesco-finance.com>
domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by maintaining a web page with
misleading links to the complainant’s competitors in the financial services
industry).
Complainant claims
Respondent’s disputed domain name resolves to a website that features a generic
offer to sell. The Panel finds
Respondent’s offer to sell the disputed domain name is additional evidence
Complainant lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where the respondent registered the
domain name with the intention of selling its rights).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated bad faith
regarding the disputed domain name due to the resolving website’s display of a
generic offer to sell. Previous panels
have held that an offer such as Respondent’s is evidence of bad faith
registration and use. The Panel concurs
under the facts of this particular case (including the so-called cyberflight
issues) and finds Respondent has engaged in bad faith registration and use
pursuant to Policy ¶4(b)(i). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶4(b)(i).”); see also Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) (finding bad faith where the respondent offered domain names for
sale).
Complainant claims Respondent’s registered and used the disputed domain name to feature a parked website that displays links to commercial websites of third-parties in direct competition with Complainant in the financial services industry. The Panel finds Respondent’s use of the disputed domain name is an attempt by Respondent to disrupt Complainant’s business and is further evidence of Respondent’s bad faith under Policy ¶4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues Respondent’s disputed domain name displays commercial links to third-party websites in competition with Complainant’s financial services. Complainant alleges Respondent receives click-through fees from the displayed links and is thus using the disputed domain name to intentionally attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with the disputed domain name. The Panel agrees and finds Respondent has demonstrated evidence of its bad faith pursuant to Policy ¶4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleywealthmanagement.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 20, 2010
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National
Arbitration Forum
[1] As discussed below, the evidence indicates that the
respondent in this case is the same as or associated with the respondent in Morgan Stanley v. Ke Zhao.
[2] Moreover, respondent here also is associated with the
same telephone number (+86 13585827900, which is the phone number for Bruce
Molsky in the prior WhoIs report and the phone number associated with Ni Made,
as shown in the reverse WhoIs report ) of the
registrants of three other domain names registered with the same registrar as
here that are confusingly similar to the MORGAN STANLEY marks, namely
MORGANSTANLEYHEDGEFUND.COM, MORGANSTANLEYPROPERTIES.COM and
MORGANSTANLEYWM.COM. Each of these other
confusingly similar domains is the subject of a separate UDRP proceeding before
the National Arbitration Forum. See
Proceeding Nos. FA 1328821, FA 1328823 and FA 328819.
[3] Additionally, the WhoIs information for www.haodomains.com,
the website of Haodomains LLC, reveals that the owner of that domain name is Ke
Zhao with the same telephone number (+86 13585827900) as respondent here and the same telephone number and
email address as the respondent Ke Zhao in decision FA 1317816.