Morgan Stanley v. San Zhang / Zhang San
Claim Number: FA1212001474978
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is San Zhang / Zhang San (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleycip.com>, registered with HICHINA ZHICHENG TECHNOLOGY 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2012; the National Arbitration Forum received payment on December 10, 2012. The Complaint was received in both English and Chinese.
On December 10, 2012, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <morganstanleycip.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the names. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY 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 December 11, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 31, 2012 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@morganstanleycip.com. Also on December 11, 2012, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" 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 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:
1. Respondent’s <marganstanleycip.com> domain name, the domain name at issue, is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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. Complainant is the owner of the domain names <morganstanley.com> and <morganstanley.net> and owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (e.g., Reg. No. 1,707,196, registered August 11, 1992). Complainant also owns trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the MORGAN STANLEY mark (e.g., Reg. No. 607,509, registered August 20, 1992).
Respondent’s <morganstanleycip.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the term “cip,” which is the abbreviation for the generic or descriptive phrase “Customer Identification Program.” Further, the addition of the generic top-level domain (“gTLD”) “.com” and elimination of spaces are irrelevant in distinguishing the disputed domain name from Complainant’s mark. Respondent is not commonly known by MORGAN STANLEY or “morganstanleycip.com,” nor does Respondent engage in any business or commerce under either of those names. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register the MORGAN STANLEY marks or domain name <morganstanleycip.com>. Respondent has no relationship whatsoever to Complainant. Respondent’s disputed domain name does not resolve to any website but merely times out when typed into the URL bar of Internet Explorer. Respondent is failing to make an active use of the disputed domain name. Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered its domain name. Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time it registered the confusingly similar domain name.
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(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.”).
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. Complainant is the owner of the domain names <morganstanley.com> and <morganstanley.net>. Complainant also owns trademark registrations with the USPTO for the MORGAN STANLEY mark (e.g., Reg. No. 1,707,196, registered August 11, 1992). Complainant also owns trademark registrations with China’s SAIC for the MORGAN STANLEY mark (e.g., Reg. No. 607,509, registered August 20, 1992). Respondent appears to reside in China. Thus, the Panel finds that Complainant’s registration with multiple trademark agencies, including the USPTO and SAIC, is sufficient to establish its rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <morganstanleycip.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the term “cip,” which is the abbreviation for the generic or descriptive phrase “Customer Identification Program.” The addition of a generic term or phrase does nothing to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Complainant further asserts that Respondent’s addition of the gTLD “.com” and elimination of spaces are irrelevant in distinguishing the disputed domain name from Complainant’s mark. The elimination of spaces between terms and the addition of a gTLD does not establish distinctiveness between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, Respondent’s <morganstanleycip.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Respondent is not commonly known by MORGAN STANLEY or “morganstanleycip.com,” nor does Respondent engage in any business or commerce under either of those names. The WHOIS database identifies “San Zhang / Zhang San” as the registrant of the disputed domain name. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register the MORGAN STANLEY marks or <morganstanleycip.com> domain name. Respondent has no relationship whatsoever to Complainant. Further, the Panel notes that Respondent has not provided additional evidence demonstrating that it is commonly known by the disputed domain name. Thus, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name does not resolve to any website, but merely times out when typed into the URL bar of Internet Explorer. It appears to the Panel that Respondent is passively holding the domain name. Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Although Complainant has not asserted any of the particular Policy ¶ 4(b) criteria evidencing bad faith use and registration, the examples of bad faith set forth in Policy ¶ 4(b) are intended to be illustrative, and not exclusive. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith based on other factors pursuant to Policy ¶ 4(a)(iii), such as failure to make an active use or actual and/or constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark. See Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Respondent’s disputed domain name does not resolve to a website but merely times out when typed into the URL bar of Internet Explorer. Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
It appears that Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered its domain name. Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time it registered the confusingly similar domain name, as Complainant has registered the MORGAN STANLEY mark in many countries throughout the world, including the United States and China. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's long and well-established reputation in the MORGAN STANLEY marks, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleycip.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 17, 2013
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