Morgan Stanley v. lihai long
Claim Number: FA2211002021417
Complainant is Morgan Stanley (“Complainant”), USA, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is lihai long (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msfundsp.com>, registered with Realtime Register B.V.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on November 22, 2022; Forum received payment on November 22, 2022.
On November 24, 2022, Realtime Register B.V. confirmed by e-mail to Forum that the <msfundsp.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 November 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@msfundsp.com. Also on November 28, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant has rights in the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196, registered August 11, 1992). The disputed domain name is confusingly similar to Complainant’s mark as it contains an abbreviated version of Complainant’s mark, the generic or descriptive term “funds” (misspelled as “fundsp”) and the “.com” generic top-level-domain name (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed 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. Respondent passes off as Complainant to offer competing financial services.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent passes off as Complainant to offer competing financial services. Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY marks prior to registration of the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on November 9, 2022.
2. Complainant has established rights in the mark MORGAN STANLEY through its registration of the mark with the USPTO (e.g., Reg. No. 1,707,196, registered August 11, 1992).
3. Complainant is often referred to by its acronym MS. “MS” has been for decades a common initialism for Complainant’s MORGAN STANLEY mark, as used by both Complainant and the public. Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field.
4. The disputed domain name’s resolving website made use of Complainant’s MORGAN STANLEY mark and displayed investment related content related to Complainant’s business.
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 claims rights in the MORGAN STANLEY mark based upon registration with the USPTO (e.g., Reg. No. 1,707,196, registered August 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). Since Complainant has provided evidence of the trademark registration, the Panel finds that Complainant has established rights in the MORGAN STANLEY mark.
Complainant also argues that the term “MS” is a common acronym for the MORGAN STANLEY because: i) a Google search for webpages that contain both the terms “Morgan Stanley” and “MS” yielded over 5 million results; ii) Complainant’s stock has been publicly traded on the New York Stock Exchange under the ticker symbol “MS” for over 25 years; iii) Complainant has been the owner of the domain name ms.com for over 25 years which resolves to Complainant’s primary website at www.morganstanley.com; iv) Complainant owns numerous domain names worldwide containing or comprising “MSFUND” or “MSFUNDS,” including <msfund.cn>, <msfund.com>, <msfund.com.cn>, <msfunds.cn>, <msfunds.com>, and <msfunds.com> all of which were registered before Respondent registered the disputed domain name; and v) Complainant has substantially exclusive use of and public reference to the initialism “MS” as a trademark in the financial services field. For the reasons above, the Panel finds that Complainant has established rights in the acronym MS as well as MORGAN STANLEY for the purposes of the Policy ¶ 4(a)(i).
Next, Complainant argues that the disputed domain name <msfundsp.com> is confusingly similar to Complainant’s mark as it contains an abbreviated version of Complainant’s mark, the generic or descriptive term “funds” (misspelled as “fundsp”) and the “.com” gTLD. The Panel observes that when a domain name incorporates an acronym of a complainant’s mark, past panels have been reluctant to hold that the domain name is identical or confusingly similar without establishing rights in the acronym. See Soc’y of St. Vincent de Paul v. Yip, D2004-0121 (WIPO May 25, 2004) (finding that the complainant acquired distinctive common law rights in the SVDP acronym because it had been used for many years to identify the complainant and the charitable services it provided). As discussed above, the Panel finds that Complainant has established rights in the acronym MS. The disputed domain name adds the generic term “funds” (misspelled as “fundsp”) and the “.com” gTLD to Complainant’s MS mark. Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s MS mark per Policy ¶ 4(a)(i).
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 that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MORGAN STANLEY or MS marks. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that the unmasked WHOIS information for the disputed domain name identifies Respondent as “lihai long.” The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or fair use. Respondent attempts to pass off as Complainant for Respondent’s commercial gain. Passing off for commercial gain can represent a failure to use a domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Here, Complainant provides screenshot evidence of the resolving website for the disputed domain name, which impersonated Complainant by displaying Complainant’s marks and logos, offering purported financial services identical or nearly identical to those of Complainant, listing an email address owned by Complainant, and mirroring multiple portions of Complainant’s legitimate website. The Panel therefore finds that Respondent has failed to use the disputed domain name in connection with 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and used the disputed domain name in bad faith as Respondent attempts to pass off as Complainant and offer consumers fake investments related to Complainant’s business. Use of a disputed domain name to pass off as a complainant and offer similar services may be evidence of bad faith per Policy ¶ 4(b)(iii) or (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products), see also Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products).
The Panel notes that the disputed domain name’s resolving website impersonated Complainant by: (a) prominently displaying and using the name and mark Morgan Stanley Huaxin Funds, which is identical to a name and mark that Complainant uses in China in connection with the offering of financial services via the domain <morganstanleyhuaxin.com>, inter alia; (b) prominently displaying Complainant’s logo for Morgan Stanley Huaxin Funds; (c) prominently displaying the MORGAN STANLEY Mark in multiple locations throughout the website; (d) purporting to offer financial services identical or nearly identical to those of Complainant; (e) listing the email address services@msfunds.com.cn, which is an email address that is owned by Complainant; (f) mirroring multiple portions of text and images from Complainant’s website located at <https://www.msfunds.com.cn/>. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Next, Complainant contends Respondent registered the disputed domain name in bad faith as Respondent had constructive and actual knowledge of Complainant’s rights to the MORGAN STANLEY mark and its acronym MS prior to registration of the disputed domain name based on Complainant’s trademark registrations and the famous nature of the mark. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel infers, due to the notoriety of Complainant’s MORGAN STANLEY and MS marks and the manner of use of the disputed domain name that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MORGAN STANLEY and MS marks at the time of registering the disputed domain name, and thus finds Respondent’s bad faith registration of the disputed domain name per 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 <msfundsp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 21, 2022
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