MIS Quality Management Corp. v. wei cheng yong
Claim Number: FA1312001536778
Complainant is MIS Quality Management Corp. (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is wei cheng yong (“Respondent”), represented by Jiang Zhu, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <moodyinvestment.com> and <moodyinvest.com>, registered with Xin Net Technology Corporation (the “Domain Names”).
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.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2013; the National Arbitration Forum received payment on December 30, 2013. The Complaint was submitted in English and Chinese.
On January 1, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <moodyinvestment.com> and <moodyinvest.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 January 13, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 3, 2014 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@moodyinvestment.com, postmaster@moodyinvest.com. Also on January 13, 2014, 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.
A timely Response was received and determined to be complete on January 29, 2014. The Response was received in both English and Chinese.
The Complainant submitted an Additional Submission in Reply to the Response on February 3, 2014, in accordance with Supplemental Rule 7(a).
The Respondent submitted an Additional Submission in Response to the Reply on February 5, 2014, in accordance with Supplemental Rule 7(a).
On January 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sebastian M W Hughes 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.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant asserts the following:
Complainant is a company incorporated in the State of Delaware in the USA and part of the Moody’s group of companies (“Moody’s”). Moody’s is a leading global provider of financial and investment-related credit ratings, research, tools, and analysis, and is listed on the New York Stock Exchange.
Moody’s serves its customers through its global network of offices and business affiliations in 27 countries, and currently maintains comprehensive rating and commercial operations in financial centers around the world including New York, London, Dubai, Buenos Aires, Frankfurt, Hong Kong, Madrid, Milan, Mexico City, Moscow, Paris, Sao Paolo, Seoul, Singapore, Sydney, Tokyo and Toronto. Moody’s employs approximately 7,200 people worldwide.
Moody’s has used its well-known MOODY’S trade mark (the “Trade Mark”) for over a century to identify its financial information products and services. Complainant is the owner of registrations for the Trade Mark in several jurisdictions worldwide, the earliest dating from 1967.
Moody’s had worldwide sales and revenue in excess of U.S. $2.7 billion in 2012, and has extensively and widely advertised and promoted its products and services under the Trade Mark for many years.
The Domain Names are confusingly similar to the Trade Mark.
Respondent has no rights or legitimate interests in the Domain Names. The domain name <moodyinvestment.com> is being used, in bad faith, in connection with a website offering, amongst other things, investment and financial services, under the name “Moody Investment Corporation Ltd” (the “Website”). The domain name <moodyinvest.com> is not currently being direct to a website, however, the Website contains a contact email address <moody@moodyinvest.com>.
B. Respondent asserts the following:
Respondent is the legal representative in Mainland China of the Hong Kong company Moody Investment Corporation Ltd incorporated in 2011 and featured on the Website. The core businesses of Respondent and Moody Investment Corporation Ltd are international trading and industry investment.
Respondent has never use the Trade Mark for any commercial purposes.
Respondent has the right to register and use the Domain Names by virtue of the incorporation of Moody Investment Corporation Ltd.
The Domain Names are not confusingly similar to the Trade Mark, and the Respondent has never received any consumer complaints of confusion.
Complainant and Respondent are in different fields. Respondent has never claimed on the Website any link or connection with Complainant.
C. Complainant asserts in Reply the following:
The incorporation of Moody Investment Corporation Ltd in Hong Kong in 2011 does not entitle Respondent to trade off the goodwill of Complainant in the Trade Mark and register the Domain Names which infringe Complainant’s Trade Mark.
Respondent has not claimed in the Response he was unaware of Complainant and the Trade Mark when the Domain Names were registered.
D. Respondent asserts in Response to the Reply the following:
The Trade Mark is just a brand name and is not the corporate name of Complainant. Respondent has never used the Trade Mark and has never had the intention to cause any confusion between the Domain Names and Complainant.
“Moody” is a common surname used in several fields. Complainant’s corporate name is very different from the corporate name Moody Investment Corporation Ltd featured on the Website, and there is therefore no chance of consumer confusion between the Domain Names and the Trade Mark.
Complainant has established all the elements entitling it to transfer of the Domain Names.
Language of the Proceeding
The language of the registration agreements for the Domain Names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances.
Complainant is a company incorporated in the US and Respondent is an individual resident in China. The Complaint was filed in both English and Chinese. The Response was filed in both English and in Chinese. This demonstrates that Respondent is proficient in English. In the circumstances, the Panel determines that Respondent will not be prejudiced if the language of the proceeding is English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
Substantive Elements of the Policy
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.
The Panel finds that Complainant has rights in the Trade Mark acquired through registration and use which predate the date of registration of the Domain Names by over 100 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name.” See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, D2000-0662 (WIPO Sept. 19, 2000).
The Domain Names comprises the word “moody” together with the non-distinctive and generic words “investment” or “invest”. The absence of the apostrophe and the letter “s” does not serve to distinguish the “moody” component of the Domain Names from the Trade Mark in any significant way.
The Panel therefore finds that the Domain Names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or names corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant has not authorised, licensed, or permitted Respondent to register or use the Domain Names or to use the Trade Mark. Complainant has prior rights in the Trade Mark which precede Respondent’s registration of the Domain Names by over 100 years. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the Domain Names, and the burden is thus on Respondent to produce evidence to rebut this presumption. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21. 2000) ; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 21, 2003).
Respondent has failed to show that it has acquired any trade mark rights in respect of the Domain Names or that the Domain Names have been used in connection with a bona fide offering of goods or services. The mere fact of having incorporated, in 2011, a company in Hong Kong under the name Moody Investment Corporation Ltd does not give rise to any trade mark rights, nor does it give rise to any rights or legitimate interests in the Domain Names, particularly in circumstances where the Hong Kong company’s name is clearly confusingly similar to the Trade Mark
The evidence suggests this is a classic shadow company matter, where Respondent, a person based in Mainland China, has incorporated a company in Hong Kong under a name confusingly similar to Complainant’s Trade Mark, in an attempt to legitimise Respondent’s infringing use of the Trade Mark in the Domain Names and on the Website.
There has been no evidence adduced to show that Respondent has been commonly known by the Domain Names.
There has been no evidence adduced to show that Respondent is making a legitimate non-commercial or fair use of the Domain Names.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel has no hesitation in finding the requisite element of bad faith has been made out. Respondent has not denied knowledge of Complainant and the Trade Mark prior to his registration of the Domain Names. The evidence shows Respondent has deliberately incorporated the Hong Kong company Moody Investment Corporation Ltd, registered the Domain Names and set up the Website in order to capitalise on Complainant’s goodwill and reputation in its well-known Trade Mark, for commercial gain.
It is well-established under the law of passing off in Hong Kong that the mere fact of incorporating a company under a name confusingly similar to a well-known trade mark (even absent any use of the company name in question) amounts to unlawful passing off.
For all the foregoing reasons, the Panel concludes that the Domain Names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moodyinvestment.com> and <moodyinvest.com> domain names be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: February 13, 2014
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