Morgan Stanley v. licheng weng
Claim Number: FA1806001791806
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is licheng weng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmorganstanley.com>, registered with DropCatch.com 1143 LLC.
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 June 14, 2018; the Forum received payment on June 14, 2018.
On June 15, 2018, DropCatch.com 1143 LLC confirmed by e-mail to the Forum that the <wwwmorganstanley.com> domain name is registered with DropCatch.com 1143 LLC and that Respondent is the current registrant of the name. DropCatch.com 1143 LLC has verified that Respondent is bound by the DropCatch.com 1143 LLC 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 June 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@wwwmorganstanley.com. Also on June 15, 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 July 9, 2018, 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, Morgan Stanley, 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 rights in the MORGAN STANLEY mark based on registration of the mark with the United States Patent and Trademark office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). Respondent’s <wwwmorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic “www” and the “.com” generic top-level domain (“gTLD”), along with the elimination of the space between the terms in the mark.
Respondent has no rights or legitimate interests in the <wwwmorganstanley.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MORGAN STANLEY mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to offer a link to unrelated goods or services. Finally, Respondent engaged in typosquatting by eliminating the period between the “www” and the mark in the domain name.
Respondent registered and is using the <wwwmorganstanley.com> domain name in bad faith. Respondent offered to sell the domain name to Complainant for an amount in great excess of out-of-pocket expenses associated with the domain name. Additionally, Respondent disrupts Complainant’s business by using the domain name to attract Internet users to an unrelated site for the purpose of downloading software to play games. Finally, Respondent clearly had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registering the infringing domain name.
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 <wwwmorganstanley.com> 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.”).
Complainant claims rights in the MORGAN STANLEY mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its USPTO registration for the MORGAN STANLEY mark. (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992). The Panel finds that Complainant’s registration of the MORGAN STANLEY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <wwwmorganstanley.com> domain name is confusingly similar to the Complainant’s MORGAN STANLEY mark because it incorporates the mark in its entirety and is differentiated only by the addition of “www” and the “.com” gTLD, along with the elimination of the space between the terms in the mark. Additions to a complainant’s mark such as “www” or a gTLD, as well as elimination of a space in a mark, do not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (Forum Mar. 14, 2017) (“Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel finds the <wwwmorganstanley.com> domain name is confusingly similar to the MORGAN STANLEY mark per 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 argues Respondent does not have rights or legitimate interests in the <wwwmorganstanley.com> domain name because Respondent tried to sell the domain name or a price well above the out-of-pocket costs. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Complainant provides copies of correspondence between Respondent and Complainant in which Respondent offers to sell the domain name for an unspecified amount, although specifically states “I am very glad to give you a nice offer. But I think only registration fees is not enough.” The Panel finds that this evidence is not sufficient to establish that Respondent lacks rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(a)(ii).
Complainant claims Respondent engages in typosquatting by eliminating the period between the “www” and the mark in the domain name. The Panel finds that a missing period outside Complaint’s mark does not establish typosquatting.
Complainant argues that Respondent has no rights or legitimate interests in the <wwwmorganstanley.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <wwwmorganstanley.com> domain name lists the registrant as “icheng weng,” and no information on the record indicates that Respondent is authorized or licensed to use the MORGAN STANLEY mark. The Panel finds that Respondent has not been commonly known by the <wwwmorganstanley.com> domain name under Policy ¶ 4(c)(ii) and that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Complainant argues Respondent fails to use the <wwwmorganstanley.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant contends Respondent uses the disputed domain name to offer a link to unrelated goods or services. Offering unrelated goods or services is not generally considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website which features a link that offers access to “thousands of games you can play for free.” The Panel finds that Respondent failed to use the <wwwmorganstanley.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Complainant has proved this element.
Complainant claims that Respondent offered to sell the <wwwmorganstanley.com> domain name to Complainant in bad faith. Offering a confusingly similar domain name for sale can evince bad faith registration. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). As noted above, Complainant provides copies of correspondence between Respondent and Complainant in which Respondent offers to sell the domain name for an unspecified amount, although specifically states “I am very glad to give you a nice offer. But I think only registration fees is not enough.” The Panel finds this is not sufficient evidence of bad faith registration and use per Policy ¶ 4(b)(i).
Complainant claims that Respondent uses the <wwwmorganstanley.com> domain name to engage in typosquatting. Typosquatting is evidence of bad faith per Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Complainant argues Respondent takes advantage of a typographical error by eliminating the period between the initial “www” portion of the domain name and Complainant’s mark located within the domain name. The Panel finds that eliminating a period outside Complainant’s mark is not typosquatting.
Complainant argues that Respondent disrupts Complainant’s business by using the domain name to attract Internet users to an unrelated site for the purpose of downloading software to play games. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant, presumably for commercial gain, is evidence of bad faith under Policy ¶¶ 4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). As noted above, the screenshot provided by Complainant shows a link with the message “You’re one click from your destination” with “access to thousands of games you can play for free.” The Panel finds from Complainant’s uncontested allegations and evidence that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark at the time of registering the <wwwmorganstanley.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can 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’s knowledge is clear given the goodwill associated with the mark all throughout the world. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use 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 <wwwmorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist Dated: July 16, 2018
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