Morgan Stanley v. zircon inc / zircon inc zircon inc
Claim Number: FA1907001852292
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is zircon inc / zircon inc zircon inc (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-coin.com>, registered with NameSilo, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2019; the Forum received payment on July 16, 2019.
On July 17, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <morganstanley-coin.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2019 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-coin.com. Also on July 18, 2019, 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 August 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with trademark agencies all over the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992) and the Chinese State Administration of Industry and Commerce (“SAIC”) (e.g. Reg. No. 775116, registered April 7, 1998). Respondent’s <morganstanley-coin.com> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in whole, adds the generic or descriptive term “coin,” adds a hyphen, eliminates a space, and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <morganstanley-coin.com> domain name. Respondent is not commonly known by the disputed domain name, and Respondent is not a licensee nor has Respondent been authorized by Complainant to use the mark. Respondent fails to use the <morganstanley-coin.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to an inactive webpage which lists the domain name for sale.
Respondent registered and uses the <morganstanley-coin.com> domain name in bad faith. Respondent is offering the disputed domain name for sale. Respondent fails to make active use of the disputed domain name. Respondent had knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the disputed domain name given the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark through its registration of the mark with trademark agencies all over the world, including the USPTO (e.g. Reg. No. 1,707,196, registered Aug. 11, 1992) and the SAIC (e.g. Reg. No. 775116, registered April 7, 1998). Respondent’s <morganstanley-coin.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <morganstanley-coin.com> domain name on June 28, 2019.
Respondent lacks rights or legitimate interests in the <morganstanley-coin.com> domain name. The <morganstanley-coin.com> domain name resolves to an inactive webpage which lists the domain name for sale.
Respondent registered and uses the <morganstanley-coin.com> domain name in bad faith.
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”).
Complainant has rights in the MORGAN STANLEY mark based on registration with the USPTO and SAIC. Registration of a mark with the USPTO and SAIC sufficiently confers a complainant rights in a mark for the purposes of Policy ¶ 4(a)(i). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (“Complainant has rights in the KOHLER mark through registration with USPTO and SAIC.”).
Respondent’s <morganstanley-coin.com> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in whole, adds the generic or descriptive term “coin,” adds a hyphen, eliminates a space, and adds the “.com” gTLD.
Respondent lacks rights or legitimate interest in the <morganstanley-coin.com> domain name as Respondent is not commonly known by the disputed domain name, and Respondent is not a licensee nor has Respondent been authorized by Complainant to use the mark.
The WHOIS information for the disputed domain name lists the registrant as “zircon inc/zircon inc zircon inc.” WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Respondent fails to use the <morganstanley-coin.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to an inactive webpage on which Respondent offers the disputed domain name for sale for $8,888. Passive holding and making a general offer to sell a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018).
Respondent registered and uses the <morganstanley-coin.com> domain name in bad faith. Respondent offers the disputed domain name for sale. Where a respondent’s only use of the disputed domain name is an offer to sell the disputed domain name, the respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018)
Respondent fails to make active use of the <morganstanley-coin.com> domain name which shows bad faith registration and use per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015).
Respondent registered and uses the <morganstanley-coin.com> domain name in bad faith per Policy ¶ 4(a)(iii) as Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark prior to registration of the disputed domain name given the fame of the mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014).
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 <morganstanley-coin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 22, 2019
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