Morgan Stanley v. Lei Shi / huade wang / Yanli Li / Zhi Qiang Yang / Domain Administrator
Claim Number: FA2201001982501
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Lei Shi / huade wang / Yanli Li / Zhi Qiang Yang / Domain Administrator (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morganstanleydatasecuritsettlement.com>, <morganstanleydatasecuritysettelment.com>, <morganstanleydatasecuritysettlemen.com>, <morganstanleydatsecuritysettlement.com>, <morganstanleydatabreachsettlement.com>, <morganstanleydatasecurityssettlement.com>, <morganstanleydatasecuritysettement.com>, <morganstanleydatasecritysettlement.com>, <morganstanleydatasecruitysettlement.com>, <morganstanleydatasettlement.com>, <morganstanleysecuritysettlement.com>, <morganstanleydatasecuritysetlement.com>, <morganstanleydatasecuritysettlment.com>, <morganstanlydatasecuritysettlement.com>, <wwwmorganstanleydatasecuritysettlement.com>, <morganstanleydatasecurityclassaction.com>, <morganstanleydatasecuritysettlement.co>, <morganstanleydatasecuritysettlement.org>, and <morganstanleysettlement.com>, (“the Domain Names”) registered with Cloud Yuqu Llc, Dynadot, Llc, Sav.Com, Llc. and Chengdu West Dimension Digital Technology Co., Ltd. (“the Registrars”).
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2022. The Forum received payment on January 28, 2022. The Complainant was submitted in English and Chinese.
On February 1, 5, 9, & 10, 2022, the Registrars confirmed by e-mail to the Forum that the Domain Names are registered with the Registrars and that Respondent is the current registrant of the names. The Registrars have verified that Respondent is bound by the Registrars’ registration agreements 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 February 11, 2022, the Forum served the Chinese language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of March 3, 2022 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@[each of the Domain Names]. Also on February 11, 2022, the English and Chinese language 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 registrations as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
In the instant proceedings, Complainant contends that the entities which control the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases. Complainant says the Domain Names are nearly identical, were registered within a few weeks of each other, and all but four use the same ISP, namely, BODIS/Amazon. Many resolve to similar pay per click sites and many use the same registrar
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Accordingly, this decision refers to Lei Shi / huade wang / Yanli Li / Zhi Qiang Yang / Domain Administrator as “Respondent”.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
The Chengdu West Dimension Digital Technology Co., Ltd. registration agreement is in Chinese and the other registration agreements are in English.
Pursuant to Rule 11(a), the language of the proceeding in relation to the <morganstanleydatasecurityssettlement.com>, <morganstanleydatabreachsettlement.com>, <morganstanleydatasecuritsettlement.com>, <morganstanleydatasecuritysettelment.com>, <morganstanleydatasecuritysettlemen.com>, <morganstanleydatsecuritysettlement.com>, <morganstanleydatasecuritysettement.com> and <wwwmorganstanleydatasecuritysettlement.com> domain names shall be Chinese and, in relation to the other domain names, English, unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The Panel notes that all the domain names registered with Chengdu West Dimension Digital Technology Co., Ltd., are in English. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the proceedings in relation to all the Domain Names may be conducted in English.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services. Complainant has rights in the MORGAN STANLEY mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s Domain Names are confusingly similar to Complainant’s MORGAN STANLEY mark, which is famous.
Respondent does not have rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not licensed or authorized Respondent to use the MORGAN STANLEY mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use as the Domain Names either resolve to a parked page with pay-per-click hyperlinks or to an inactive webpage.
Respondent registered the Domain Names in bad faith with actual knowledge of Complainant’s rights in the MORGAN STANLEY mark based on the fame of the mark and Respondent uses the Domain Names in bad faith. Some direct users to pay-per-click hyperlinks, while some are inactive. Respondent’s use of the Domain Names causes initial interest confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the MORGAN STANLEY mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered Aug. 11, 1992). The Panel finds each of Respondent’s Domain Names to be confusingly similar to Complainant’s MORGAN STANLEY mark as each incorporates the mark in its entirety and simply adds the terms “data,” “security,” “breach,” “class action,” and/or “settlement,” together with misspellings, none of which distinguish any of the Domain Names from the mark. The inconsequential generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The domain names
<morganstanleydatasecuritsettlement.com>, <morganstanleydatasecuritysettelment.com>, <morganstanleydatasecuritysettlemen.com>, <morganstanleydatsecuritysettlement.com>, <morganstanleydatabreachsettlement.com>, <morganstanleydatasecuritysettement.com>, <morganstanleydatasecritysettlement.com>, <morganstanlydatasecuritysettlement>, <morganstanleydatasecruitysettlement.com>, <morganstanleydatasettlement.com>, <morganstanleydatasecurityclassaction.com>, <morganstanleydatasecuritysettlement.co> and <morganstanleysettlement.com> resolve to “parking” websites, with links to third-party businesses offering financial services related to Complainant’s services as well as other services.
The domain names <morganstanleydatasecurityssettlement.com>, <morganstanleysecuritysettlement.com>, <morganstanleydatasecuritysetlement.com>, <morganstanleydatasecuritysettlment.com>, <wwwmorganstanleydatasecuritysettlement.com> and <morganstanleydatasecuritysettlement.org> do not resolve to active websites.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous MORGAN STANLEY mark when Respondent registered the Domain Names did so in bad faith.
As to those of the Domain Names that resolve to active websites, Respondent has intentionally attempted to attract, for commercial gain, Internet users to those websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the services promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
As to those of the Domain Names that are inactive, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), there is no conceivable active use that could be made of the Domain Names that would not amount to an infringement of Complainant’s rights. Accordingly, the Panel finds that Respondent’s passive use of those domain names also constitutes use in bad faith.
Complainant has established 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 <morganstanleydatasecuritsettlement.com>, <morganstanleydatasecuritysettelment.com>, <morganstanleydatasecuritysettlemen.com>, <morganstanleydatsecuritysettlement.com>, <morganstanleydatabreachsettlement.com>, <morganstanleydatasecurityssettlement.com>, <morganstanleydatasecuritysettement.com>, <morganstanleydatasecritysettlement.com>, <morganstanleydatasecruitysettlement.com>, <morganstanleydatasettlement.com>, <morganstanleysecuritysettlement.com>, <morganstanleydatasecuritysetlement.com>, <morganstanleydatasecuritysettlment.com>, <morganstanlydatasecuritysettlement.com>, <wwwmorganstanleydatasecuritysettlement.com>, <morganstanleydatasecurityclassaction.com>, <morganstanleydatasecuritysettlement.co>, <morganstanleydatasecuritysettlement.org>, and <morganstanleysettlement.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 14, 2022
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