Morgan Stanley v. Jia Jiao Jia Jiao
Claim Number: FA2003001888491
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondent is Jia Jiao Jia Jiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-asia.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2020; the Forum received payment on March 16, 2020.
On March 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morganstanley-asia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2020 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@morganstanley-asia.com. Also on March 17, 2020, 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 April 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). Respondent’s <morganstanley-asia.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely adds a hyphen and the descriptive or generic term “asia”, as well as the “.com” generic Top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <morganstanley-asia.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s trademark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is passing off as Complainant to further a phishing scheme. Additionally, Respondent is typosquatting.
Respondent registered and used the <morganstanley-asia.com> domain name in bad faith. Respondent’s use and registration of the disputed domain name disrupts the business of the Complainant. Respondent seeks to falsely suggest that it is somehow endorsed by or affiliated with Complainant. Such false association, passing off and phishing in violation of Complainant’s intellectual property rights is further evidence of bad faith use and registration Finally, Respondent had constructive knowledge of Complainant’s rights in its mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,707,196 MORGAN STANLEY (word), registered August 11, 1992 for services in class 36; and
No. 4,470,389 MORGAN STANLEY (word), registered January 21, 2014 for goods in classes 9 and 16.
The disputed domain name <morganstanley-asia.com> was registered on March 5, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the MORGAN STANLEY trademark based on registration of the trademark with the USPTO (e.g. Reg. No. 1,707,196 registered on Aug. 11, 1992). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore find that Complainant has established rights in the MORGAN STANLEY trademark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <morganstanley-asia.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely adds a hyphen and the descriptive or generic term “asia”, as well as the “.com” generic top-level domain (“gTLD”). Merely adding a hyphen and a generic geographic term, as well as a gTLD, to an otherwise recognizable trademark may not sufficiently distinguish a disputed domain name from a complainant’s trademark under Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel find that Respondent’s <morganstanley-asia.com> domain name is confusingly similar to the Complainant’s MORGAN STANLEY trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 that Respondent has no rights or legitimate interests in the <morganstanley-asia.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s trademark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel note the WHOIS of record identifies the Respondent as “Jia Jiao Jia Jiao” and no information in the record indicates that Respondent was authorized to use Complainant’s trademark or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent has no rights or legitimate interests in the <morganstanley-asia.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <morganstanley-asia.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is passing offs the Complainant to further a phishing scheme. Using a disputed domain name to deceive Internet users into believing an affiliation exists between a respondent and a complainant so to induce them into divulging personal or financial information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). Here, Complainant provides screenshot of the <morganstanley-asia.com> domain name’s resolving webpage, showing use of Complainant’s trademark and directs Internet users to contact them and presumably provide financial information to Respondent. Therefore, the Panel clearly find that Respondent fails to use the <morganstanley-asia.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Complainant argues that Respondent registered and used the <morganstanley-asia.com> domain name in bad faith. Specifically, Respondent is attempting to gain financially at Complainant expense by passing off as Complainant to facilitate a phishing scheme. Registering a disputed domain name for the purpose of deceiving Internet user into believing a respondent is the complainant to facilitate a phishing scheme is a clear evidence of bad faith under Policy ¶ 4(b)(iv). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to frequently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As already noted above, in this case, the Complainant provides screenshot of the <morganstanley-asia.com> domain name’s resolving webpage, showing use of Complainant’s trademark and directs Internet users to contact them and presumably provide financial information to Respondents. Therefore, the Panel find that Respondent registered and used the <morganstanley-asia.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered and uses the <morganstanley-asia.com> domain name in bad faith because Respondent had constructive knowledge of Complainant’s rights in the MORGAN STANLEY trademark. Although panels have generally not regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in the trademark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (FORUM Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant argues that its MORGAN STANLEY trademarks are well known and registered around the world. Complainant provides screenshots of financial data and business reports to indicate the fame of its trademark. This, in connection with Respondent’s use of the disputed domain name clearly indicate that Respondent had actual knowledge of Complainant’s rights in its MORGAN STANLEY trademark under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley-asia.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 18, 2020
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