Morgan Stanley v. Shen Yong Bin / Yong Bin Shen
Claim Number: FA1409001582400
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Shen Yong Bin / Yong Bin Shen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleychina.net>, registered with Chengdu West Dimension Digital Technology Co., 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2014; the National Arbitration Forum received payment on September 29, 2014. The Complaint was received in both Chinese and English.
On October 8, 2014, Chengdu West Dimension Digital Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <morganstanleychina.net> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 October 8, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 28, 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@morganstanleychina.net. Also on October 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
1. Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
a. Complainant offers a full range of financial, investment and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant has used the MORGAN STANLEY mark continuously since at least 1935.
b. Complainant owns registrations for the MORGAN STANLEY mark internationally, including the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”).
c. Respondent’s <morganstanleychina.net> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
i. Respondent’s disputed domain name features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the geographic locator “China.”
ii. Respondent also adds the generic top-level domain (“gTLD”) “.net” and eliminates the space between MORGAN and STANLEY.
2. Respondent has no rights or legitimate interests in the <morganstanleychina.net> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent does not engage in business or commerce using the name Morgan Stanley.
b. Respondent is not using the <morganstanleychina.net> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent’s resolving website purports to be an official website of Complainant’s. Respondent utilizes Complainant’s mark numerous times on the resolving website.
ii. Respondent’s resolving website invites unsuspecting internet users to enter personal and confidential information.
3. Respondent registered and is using the <morganstanleychina.net> domain name in bad faith.
a. Respondent uses the confusingly similar domain name to attract internet users to the resolving website and commercially profit from their confusion.
b. Respondent is attempting to pass itself off as Complainant for the purpose of collecting personal and confidential information from confused Internet users.
c. Respondent’s use of the disputed domain name indicates a phishing scheme.
d. Respondent had actual knowledge of Complainant and complainant’s MORGAN STANLEY mark at the time Respondent registered the disputed domain name.
Respondent
Respondent did not submit a Response in this proceeding.
Panel Note: Language of the Proceedings
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.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 claims that it has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i). Complainant asserts that its company offers a full range of financial, investment and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant contends that it has used the MORGAN STANLEY mark continuously since at least 1935. Complainant provides evidence that it owns registrations for the MORGAN STANLEY mark internationally, including with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992) and SAIC (e.g., Reg. No. 775,116, registered April 7, 1998). Panels have found that the registration of a mark with a federal trademark authority is evidence of having rights in that mark. 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).”). Therefore, the Panel finds that Complainant has rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <morganstanleychina.net> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant claims that Respondent’s disputed domain name features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the geographic locator “China.” Complainant states that Respondent also adds the gTLD “.net” and eliminates the space between MORGAN and STANLEY. Past panels have conclusively found that adding generic words and a gTLD, along with eliminating spaces, are all changes that are insufficient to escape a finding of confusingly similar under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel concludes that Respondent’s <morganstanleychina.net> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <morganstanleychina.net> domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent does not engage in business or commerce using the name Morgan Stanley. Complainant additionally argues that Respondent is neither a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use the MORGAN STANLEY mark or the disputed domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Therefore, based on the fact that the WHOIS information lists “Yong Bin Shen” as registrant of the disputed domain name and the lack of any additional information, the Panel finds that Respondent is not commonly known by the <morganstanleychina.net> domain name.
Complainant claims that Respondent is not using the <morganstanleychina.net> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s resolving website purports to be an official website of Complainant’s. Additionally, Complainant claims that Respondent utilizes Complainant’s mark repeatedly on the resolving website which also invites unsuspecting internet users to enter personal and confidential information. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) the panel stated, “In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name.” Similarly, the Panel finds that Respondent’s repeated use of Complainant’s MORGAN STANLEY mark on the resolving website, as well as the confusing content where Respondent alleges that it is Complainant, does not establish rights or legitimate interests for Respondent under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s resolving website invites unsuspecting Internet users to enter personal and confidential information, such as names, phone numbers, and bank account information into the imitation Morgan Stanley web portal. Panels have found that phishing schemes are a clear indication that a respondent has no rights or legitimate interests in a given domain name. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (using a domain name in fraudulent scheme to deceive Internet users into providing personal information is not bona fide offering of goods or services or legitimate noncommercial or fair use). The Panel concludes that Respondent has no rights or legitimate interests in the <morganstanleychina.net> domain name due to its phishing scheme under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant alleges that Respondent registered and is using the <morganstanleychina.net> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent uses the confusingly similar domain name to attract internet users to the resolving website that prominently displays Complainant’s mark and leads to a commercial profit for Respondent. Past panels have concluded that a respondent’s intention to impersonate a complainant and falsely suggest that the website is maintained by or affiliated with complainant is a strong indication of bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using complainant’s famous marks and likeness). The Panel concludes that Respondent registered and is using the <morganstanleychina.net> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent’s use of the <morganstanleychina.net> domain name indicates a phishing scheme in bad faith under Policy ¶ 4(a)(iii). Complainant argues that Respondent is attempting to pass itself off as Complainant for the purpose of collecting personal and confidential information from confused Internet users. Complainant provides evidence that Respondent’s resolving website requests information including full name, bank account information, address and phone numbers. In Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) the panel found bad faith registration and use because respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from Internet users. Likewise, the Panel concludes that Respondent’s attempts to solicit personal information from unsuspecting Internet users amounts to a phishing scheme and therefore bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent was aware of Complainant and Complainant’s famous MORGAN STANLEY mark when Respondent registered the disputed domain name. Complainant asserts that because of Complainant’s use of the MORGAN STANLEY mark and its registrations in countries all over the world, Respondent had notice of Complainant’s rights. Complainant also points out that Respondent’s domain name was created on September 27, 2014 which was significantly after Complainant registered the MORGAN STANLEY mark. UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). Still, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <morganstanleychina.net> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 5, 2014
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