Morgan Stanley v. da wei
Claim Number: FA1701001712311
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is da wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morgan-stanley.cn.com> and <morganstanleychina.cn.com>, registered with West263 International Limited.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant requested mandatory CentralNic Mediation on December 30, 2016. See Compl., at Attached Ex. K. On December 31, 2016, CentralNic opened a request for mediation with a time limit of 14 business days. Id. Respondent replied to the mediation request with an offer for purchase of the domain names, which was relayed by CentralNic to Complainant. Id. The mediation process has since expired/been terminated. Id.
Complainant submitted a Complaint to the Forum electronically on January 13, 2017; the Forum received payment on January 13, 2017.
On January 13, 2017, West263 International Limited confirmed by e-mail to the Forum that the <morgan-stanley.cn.com> and <morganstanleychina.cn.com> domain names are registered with West263 International Limited and that Respondent is the current registrant of the names. West263 International Limited has verified that Respondent is bound by the West263 International Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On January 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2017 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@morgan-stanley.cn.com and postmaster@morganstanleychina.cn.com. Also on January 13, 2017, the 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 18, 2017.
On January 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the CDRP Dispute Resolution Policy (“Rules”).
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
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. 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”). See Compl., at Attached Ex. H (USPTO Registry No. 1,707,196, registered Aug. 11, 1992; SAIC Registry No. 775116, registered Jan. 7, 1995). Respondent’s <morgan-stanley.cn.com> and <morganstanleychina.cn.com> are confusingly similar because they both incorporate the mark fully, along with “.cn.com,” while the former adds a hyphen between the words of the mark, and the latter eliminates the space between words of the mark and adds the geographically descriptive term “China.”
Respondent has no rights or legitimate interests in <morgan-stanley.cn.com> and <morganstanleychina.cn.com>. Respondent is not commonly known by the domain names, Respondent is not a licensee of Complainant, and Respondent has never been authorized to register any iteration of Complainant’s MORGAN STANLEY mark. Further, Respondent has not arranged for the domain names to resolve to active websites, which fails to evince any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Ex. J.
Respondent registered or used <morgan-stanley.cn.com> and <morganstanleychina.cn.com> in bad faith. Respondent offered to sell Complainant the domain names in response to Complainant’s pursuit of CentralNic Mediation. See Compl., at Attached Ex. K. This constitutes bad faith under Policy ¶ 4(b)(i). Next, Respondent’s inactive holding of the domain names is evidence of bad faith under Policy ¶ 4(a)(iii), as is Respondent’s actual or constructive knowledge of Complainant when registering the domain names.
B. Respondent
Respondent made the following contentions.
“Hello, this is my personal name registered domain name, in view of the global domain name open, I therefore register this domain name. But I would like to comply with copyright law, I registered domain name will not have any business, purely interest in investment, if there are other problems, or are interested in buying, please provide a satisfactory offer, because I did not use the domain name to do any Violation of the law of things, you can see my domain name has not yet any analytical records, a blank, so please protect my Western Digital rights, thank you!”
1. Complainant is a United States company that offers a full range of financial, investment and wealth management services to clients.
2. 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”). See Compl., at Attached Ex. H (USPTO Registry No. 1,707,196, registered Aug. 11, 1992; SAIC Registry No. 775116, registered Jan. 7, 1995).
3. Respondent registered the disputed <morgan-stanley.cn.com> and <morganstanleychina.cn.com> domain names on December 29, 2016.
4. Respondent has not caused the domain names to resolve to active websites but has offered to sell them to Complainant.
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 CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. 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. Complainant owns registrations for the MORGAN STANLEY mark internationally, including the USPTO and the SAIC. See Compl., at Attached Ex. H (USPTO Registry No. 1,707,196, registered Aug. 11, 1992; SAIC Registry No. 775116, registered Jan. 7, 1995). Registrations with both entities have returned findings of rights per Policy ¶ 4(a)(i). See Guess? IP Holder L.P. and Guess?, Inc. v. zhou hong hai, FA 1610066 (Forum May 1, 2015) (determining that “Complainant’s USPTO and SAIC registrations are sufficient to establish Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i).”). Complainant has provided such registrations in support of rights under Policy ¶ 4(a)(i) and the Panel finds that Complainant has by that means established its trademark rights in MORGAN STANLEY.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY
Mark. Complainant argues that Respondent’s <morgan-stanley.cn.com> and <morganstanleychina.cn.com> are confusingly similar because they both incorporate the mark fully, along with “.cn.com,” while the former adds a hyphen between the words of the mark, and the latter eliminates the space between words of the mark and adds the geographically descriptive term “China.” The Panel notes the following decision regarding the addition of “.cn.com”: “Respondent’s <balluff.cn.com> domain name is identical to the BALLUFF mark under Policy ¶ 4(a)(i), because it entirely contains the mark, and is differentiated by only the additions of a second level domain name that corresponds to the ccTLD ‘.cn’ and the gTLD ‘.com.’” BALLUFF GMBH v. zhengshuang.li / stuttgart Technology co., LTD, FA 1628872 (Forum Aug. 31, 2015). Further, the Panel notes decisions that disregard adding hyphenation, eliminating spacing between words of marks, and adding the geographically descriptive term “China.” See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark . . . does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Accordingly, the Panel finds that the weight of decisions favors the domain names at issue being found as confusingly similar to the MORGAN STANLEY mark under Policy ¶ 4(a)(i) and the Panel so finds.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MORGAN STANLEY mark and to use it in its domain names, adding only “.cn.com” in both cases and the geographically descriptive term “China” in one case;
(b) Respondent registered the domain names on December 29, 2016;
(c) Respondent has not caused the domain names or resolve to active websites but has offered to sell them to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <morgan-stanley.cn.com> and <morganstanleychina.cn.com> domain names as Respondent is not commonly known by the domain names, Respondent is not a licensee of Complainant, and Respondent has never been authorized to register any iteration of Complainant’s MORGAN STANLEY mark. Where a respondent does not counter such arguments, a finding of “commonly known by” under Policy ¶ 4(c)(ii) may not be made in favour of a respondent. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS indicates that “da wei” is registrant of the domain names, Respondent has not countered Complainant’s contentions, and Complainant has asserted that Respondent is not commonly known by the domain names. Accordingly, the Panel finds that Complainant has met its prima facie burden under Policy ¶ 4(c)(ii), which Respondent has not rebutted;
(f) Further, Complainant argues that Respondent has not arranged for the domain names to resolve to active websites, which fails to evince any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Ex. J. Failure to use a domain name may indicate a lack of rights and legitimate interests. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel finds for the above reeasons that Respondent has not established any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
Respondent has filed a Response the details of which are set out above. The Panel finds that Respondent’s contentions do not rebut the prima facie case against it. The mere fact that Respondent has not used the domain names to violate any law does not show a right or legitimate interest in them. In any event, the fact that Respondent unequivocally invites Complainant to buy the domain names from Respondent, especially when they contain Complainant’s famous trademark, negates any right or legitimate interest that might otherwise be present. Moreover, in earlier dealings with CentralNic, Respondent had offered to sell the domain names to Complainant for “a reasonable price.” Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used <morgan-stanley.cn.com> and <morganstanleychina.cn.com> in bad faith. Specifically, Complainant argues that Respondent offered to sell Complainant the domain names in response to Complainant’s pursuit of CentralNic Mediation. See Compl., at Attached Ex. K. General offers for sale have been seen to constitute bad faith. See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). The Panel finds that Respondent’s primary purpose in registering the domain names was for profit by reselling the domain names and thus finds bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent’s inactive holding of the domain names is evidence of bad faith under Policy ¶ 4(a)(iii). Inactive holding may be considered bad faith under a nonexclusive consideration of Policy ¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere [failure to make an active use] of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”). The Panel finds that Respondent’s offer for sale, coupled with the inactive holding, constitutes bad faith under Policy ¶ 4(a)(iii) under the reasoning in Cruzeiro Licenciamentos Ltda.
Thirdly, Complainant asserts that Respondent’s actual or constructive knowledge of Complainant when registering the domain names is evidenced by Complainant’s fame and the incorporation of nearly identical forms of Complainant’s mark in the domain names. Although constructive knowledge usually does not succeed as an argument under the Policy (See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”) the notion of “actual knowledge” may be shown through a totality of circumstances. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”). Complainant has submitted several exhibits which purport to demonstrate the MORGAN STANLEY mark’s ubiquity. See generally Compl., at Attached Exs. A–G. The Panel also finds the incorporation of the mark in the domain names as persuasive in determining that Respondent registered and used the domain names with actual knowledge, showing bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the MORGAN STANLEY mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morgan-stanley.cn.com> and <morganstanleychina.cn.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: January 27, 2017
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