Morgan Stanley v. Bruce Pu
Claim Number: FA1712001764120
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Bruce Pu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgan-stanley.top>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 Forum electronically on December 22, 2017; the Forum received payment on December 22, 2017.
On December 26, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <morgan-stanley.top> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2018 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.top. Also on January 2, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 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 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
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 over 1,000 offices in over 40 countries, including China, and over 55,000 employees worldwide. Complainant registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). Respondent’s <morgan-stanley.top> domain name is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and merely adds a hyphen and the generic top-level domain (“gTLD”) “.top.”
Respondent has no rights or legitimate interests in the <morgan-stanley.top> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent previously used the domain name to resolve to a parked webpage where it offered the domain name for sale to the public. Further, when Respondent replied to Complainant’s demand letter, it included an offer to sell the domain name to Complainant. Additionally, Respondent, after it communicated, changed the resolving domain to contain generic stock photos unrelated to the services offered by Complainant. Moreover, Respondent invites Internet users to fill out a form to submit their names and email addresses in an apparent phishing scheme. Finally, Respondent clearly registered the domain name to create initial interest confusion and capitalize on the goodwill associated with the MORGAN STANLEY mark.
Respondent registered and uses the <morgan-stanley.top> domain name in bad faith. On the initial webpage associated with the disputed domain name, Respondent displayed a message stating that the domain name is for sale to the general public. Further, Respondent uses the domain name to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY marks. Respondent also fails to make an active use of the domain name. Additionally, Respondent uses the domain name to engage in phishing. Finally, Respondent clearly had actual or constructive knowledge of Complainant as Complainant has a long and well established reputation in the MORGAN STANLEY marks through its exclusive use in the financial and investment services industries throughout the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <morgan-stanley.top> 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(f), 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 (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.”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant registered the MORGAN STANLEY mark with the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <morgan-stanley.top> domain name is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and merely adds a hyphen and the gTLD “.top.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel finds that the <morgan-stanley.top> domain name is confusingly similar to the MORGAN STANLEY mark under Policy ¶4(a)(i).
Complainant has proved 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <morgan-stanley.top> domain name. Where a response is lacking, relevant information includes the WHOIS information and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Bruce Pu / Bruce Pu” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the MORGAN STANLEY mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <morgan-stanley.top> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent previously used the domain name to resolve to a parked webpage. Using a confusingly similar domain name to host a parked webpage generally fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent hosted a parked webpage and finds that Respondent failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Further, Complainant claims that Respondent offers the disputed domain name for sale, first to the public on the resolving domain, and again to Complainant when responding to Complainant’s demand letter. Offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). The screenshot of the initial resolving domain provided by Complainant displays the message “the domain is for sale!” Also, Complainant provides correspondence between Respondent and Complainant, which shows that Respondent writes that the domain name “is now on sold to public.” The Panel finds that Respondent offers the disputed domain name for sale, indicative of possessing no rights and legitimate interests under Policy ¶ 4(a)(ii).
Additionally, Complainant argues that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the webpage contains generic stock photos unrelated to the services offered by Complainant. Using a confusingly similar domain to promote unrelated services can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Complainant provides a screenshot of the most recent webpage associated with the domain name, which appears to contain various photos related to services such as “Eat. Travel. Photograph” and “Snapshots from Around the World.” The Panel finds that Respondent uses the domain name in connection with services unrelated to those of Complainant, and does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent engages in a phishing scheme to obtain information from users. Phishing schemes can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant’s screenshot of the resolving webpage contains a location where Internet users can enter in their names, email address, and write a message. Complainant alleges that Respondent does so to obtain information from users. The Panel agrees that Respondent attempts to phish for information from Internet users and finds that Respondent fails to use the <morgan-stanley.top> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Finally, Complainant contends that Respondent only uses its MORGAN STANLEY mark in the domain name to benefit from Complainant’s goodwill. Panels have held that this use can demonstrate a lack of a bona fide offering of goods or services and a legitimate noncommercial or fair use. Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel agrees and finds this use is additional evidence of Respondent’s lack of rights and legitimate interests in the domain name for the purposes of Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant claims that Respondent offers the <morgan-stanley.top> domain name for sale. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As mentioned previously, the screenshot of the initial resolving domain provided by Complainant displays the message “the domain is for sale!” Respondent’s offering of the domain name for sale to the general public is evidence of bad faith registration.
Further, Complainant argues that Respondent registered and uses the <morgan-stanley.top> domain name to take advantage of the goodwill and brand recognition associated with Complainant and its famous MORGAN STANLEY mark. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant alleges that the commercial gain for Respondent comes from receiving information from users through a space on the website to input their name and email address. Accordingly, the Panel finds that Respondent attempts to trade upon the goodwill of Complainant, presumably for commercial gain, in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent engages in a phishing scheme to obtain users’ personal information. Using a confusingly similar domain name to phish for information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). As noted previously, the screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s MORGAN STANLEY mark at the time of registering the <morgan-stanley.top> domain name. The Panel will disregard arguments of bad faith based on constructive notice as 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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 contends that Respondent must have had actual knowledge of Complainant’s mark as Complainant has a long and well established reputation through its exclusive use in the financial and investment services industries throughout the world. The Panel agrees and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <morgan-stanley.top> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 2, 2018
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