Morgan Stanley v. lixue c/o zhou jian
Claim Number: FA1304001492902
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is lixue c/o zhou jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.pw>, registered with Xin Net Technology Corp.
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 April 3, 2013; the National Arbitration Forum received payment on April 3, 2013. The Complaint was submitted in both Chinese and English.
On April 7, 2013, Xin Net Technology Corp. confirmed by e-mail to the National Arbitration Forum that the <morganstanley.pw> domain name is registered with Xin Net Technology Corp. and that Respondent is the current registrant of the name. Xin Net Technology Corp. has verified that Respondent is bound by the Xin Net Technology Corp. 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 April 8, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 29, 2013 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@morganstanley.pw. Also on April 8, 2013, 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 May 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s < morganstanley.pw > 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 offers a full range of financial, investment, and wealth management services under the MORGAN STANLEY mark. By virtue of its registration of the MORGAN STANLEY mark (Reg. No. 1,707,196 registered Aug. 11, 1992) with the United States Patent and Trademark Office (“USPTO”) and the MORGAN STANLEY mark (Reg. No. 607,505 registered August 20, 1992) with the State Administration for Industry and Commerce (“SAIC”) in China, Complainant has rights in the MORGAN STANLEY mark. Respondent’s removal of the space between words in Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.pw” does not undo that the <morganstanley.pw> domain name is identical to the MORGAN STANLEY mark.
Respondent is not a licensee of Complainant nor has it been authorized to use the MORGAN STANLEY mark. Respondent has no relationship with Complainant whatsoever. The WHOIS records lists “lixue c/o zhou jian” as the domain name registrant, suggesting that neither <morganstanley.pw> domain name nor the MORGAN STALEY mark are part of Respondent’s name.
The <morganstanley.pw> domain name does not resolve to an active website, rather, it times out when typed into the URL bar of an Internet provider. Respondent’s failure to make an active use of the disputed domain name demonstrates Respondent’s bad faith. Respondent had constructive and actual knowledge of Complainant’s rights in the <morganstanley.pw> domain name at the time it registered the <morganstanley.pw> domain name. The MORGAN STANLEY mark has a long and well-established reputation in the financial and investment services industries worldwide. Respondent registered the <morganstanley.pw> domain name on March 26, 2013.
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.”).
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 offers a full range of financial, investment, and wealth management services under the MORGAN STANLEY mark and contends that, by virtue of its registration of the MORGAN STANLEY mark (Reg. No. 1,707,196 registered Aug. 11, 1992) with the USPTO and the MORGAN STANLEY mark (Reg. No. 607,505 registered August 20, 1992) with the SAIC in China, Complainant has rights in the MORGAN STANLEY mark. Panels have found that registration of a mark with a federal trademark authority is sufficient for a showing of rights under the Policy. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, Complainant has rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).
Respondent’s removal of the space between words in Complainant’s mark and the addition of the ccTLD “.pw” does not undo that the <morganstanley.pw> domain name is identical to the MORGAN STANLEY mark. The domain name includes a ccTLD” which represents the country of Palau. The panel in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), held that as spaces are impermissible and gTLDs are required, the respective deletion and addition of them has no bearing on a Policy ¶ 4(a)(i) analysis. In Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009), the panel stated that the addition of a ccTLD to the disputed domain name does not negate the fact that the domain name is identical to a mark. Accordingly, the Panel finds that the <morganstanley.pw> domain name is identical to the MORGAN STANLEY mark pursuant to 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 a licensee of Complainant nor has it been authorized to use the MORGAN STANLEY mark, and further, Respondent has no relationship with Complainant whatsoever. The WHOIS record lists “lixue c/o zhou jian” as the domain name registrant, suggesting that neither <morganstanley.pw> domain name nor the MORGAN STALEY mark are part of Respondent’s name. Therefore, Respondent is not commonly known by the <morganstanley.pw> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The <morganstanley.pw> domain name does not resolve to an active website, rather, it times out when typed into the URL bar of an Internet provider. In Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), the panel held that the inactive use of a disputed domain name does not provide the respondent with rights and legitimate interests in the domain name. Therefore, Respondent’s nonuse of the <morganstanley.pw> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The Panel notes that Policy ¶ 4(b) lists four factors that may be considered when making a determination of bad faith. Panels have considered these factors and found that they are not an exclusive list of factors. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel will determine bad faith based on the totality of the circumstances.
Respondent’s failure to make an active use of the disputed domain name demonstrates Respondent’s bad faith. The panel in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), found that the nonuse of a domain name demonstrates bad faith. Accordingly, Respondent’s registration and inactive use of the <morganstanley.pw> domain name are a product of bad faith under Policy ¶ 4(a)(iii).
Lastly, Respondent had constructive and actual knowledge of Complainant’s rights in the <morganstanley.pw> domain name at the time it registered the <morganstanley.pw> domain name. The MORGAN STANLEY mark has a long and well-established reputation in the financial and investment services industries worldwide and owns many registrations for the MORGAN STANLEY mark with trademark authorities around the world. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark, this Panel finds that Respondent had actual knowledge of the mark and Complainant's rights in the mark. 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 <morganstanley.pw> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 19, 2013
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