Morgan Stanley v. zhang wei
Claim Number: FA2303002037470
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is zhang wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morrganstanley.com>, registered with NameCheap, Inc..
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on March 27, 2023; Forum received payment on March 27, 2023.
On March 27, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <morrganstanley.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2023 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@morrganstanley.com. Also on March 27, 2023, 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 April 19, 2023, 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 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
Complainant, Morgan Stanley, is a financial services provider. Complainant has rights in the MORGAN STANLEY mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 1,707,196, which was registered August 11, 1992). Respondent’s <morrganstanley.com> domain name is identical or confusingly similar to the MORGAN STANLEY mark as it merely misspells the mark. In addition, removing a space and adding a generic top-level domain (“gTLD”) is irrelevant.
Respondent lacks rights or legitimate interests in the <morrganstanley.com> domain name since Respondent is not licensed or authorized to use Complainant’s MORGAN STANLEY mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent causes consumer confusion and uses the name for a parked page with pay-per-click hyperlinks to Complainant’s competitors. The MORGAN STANLEY mark was registered prior to the disputed domain name. The the mark is famous and Respondent had actual and constructive notice of Complainant’s rights in the mark.
Respondent registered and uses the <morrganstanley.com> domain name in bad faith by using a confusingly similar domain name to cause consumer confusion. Respondent also displays pay-per-click competing hyperlinks. Further, given the fame of the MORGAN STANLEY mark, there is no reason for Respondent to register the disputed domain name aside from capitalizing on the mark’s goodwill. Respondent is typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <morrganstanley.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 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 through multiple trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 1,707,196, which was registered August 11, 1992). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence of registration of the MORGAN STANLEY mark with the USPTO. The Panel finds that Complainant has demonstrated rights in the MORGAN STANLEY mark per Policy ¶ 4(a)(i).
Complainant argues the <morrganstanley.com> domain name is identical or confusingly similar to its MORGAN STANLEY mark since it simply adds an extra “r” and eliminates the space before adding the “.com” gTLD. Misspelling a mark, such as through adding letters, does not defeat a finding of confusing similarity. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”). Further, spaces and gTLDs may be disregarded for purposes of Policy ¶ 4(a)(i) analysis. See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Spaces and gTLDs are irrelevant and Respondent adds only an extra letter to Complainant’s MORGAN STANLEY mark The Panel finds <morrganstanley.com> is confusingly similar to Complainant’s mark under 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues Respondent has no rights or legitimate interests in the <morrganstanley.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the MORGAN STANLEY mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the 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)”); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for <morrganstanley.com> lists the registrant as “zhang wei.” Further, there is no evidence to suggest Respondent was authorized, licensed rights to, or otherwise permitted to use the MORGAN STANLEY mark. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also contends Respondent’s use of the MORGAN STANLEY mark in the <morrganstanley.com> domain name causes consumer confusion and disrupts its business. Previous Panels have found that use of a confusingly similar domain name to divert customers away from a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). This is evidence that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial use of the <morrganstanley.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues Respondent uses the domain name for a parked webpage with pay-per-click hyperlinks to Complainant’s competitors. Panels have found that a respondent’s use of a domain name for competing hyperlinks and pay-per-click links does not satisfy Policy ¶¶ 4(c)(i) or 4(c)(iii). See Provide Commerce, Inc. v. e on Craze, FA 1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides evidence that <morrganstanley.com> resolves to a parked page with links titled, for example, “Financial Services Company.” The Panel finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial use of the <morrganstanley.com> domain name under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses the <morrganstanley.com> domain name in bad faith by hosting a parked page with pay-per-click hyperlinks that direct users to competitors. Panels have held a respondent’s use of a domain for hyperlinks to third-party sites that compete with a complainant, and with which respondent likely profits from click-through fees, indicates bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA 1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Such use may also indicate bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA 1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Respondent displays generic links related to financial services on the resolving site. This is evidence of bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Complainant further argues Respondent has no reason to register the <morrganstanley.com> domain name other than to trade off Complainant’s goodwill in the MORGAN STANLEY mark given the mark’s fame. When a mark is especially well known, Panels have held that no possible use of the mark by someone other than its owner can be in good faith. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”). Complainant provides reports and rankings to support its assertion of the mark’s international fame. Respondent’s use of the MORGAN STANLEY mark is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant contends Respondent is typosquatting. Panels have agreed typosquatting indicates registration and use in bad faith. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Respondent merely adds the letter “r” to the MORGAN STANLEY mark. Respondent is engaged in typosquatting with the <morrganstanley.com> domain name by adding a single letter. This is evidence of it bad faith under Policy ¶ 4(a)(iii).
Complainant claims Respondent had actual and constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark when registering <morrganstanley.com>. Actual knowledge is sufficient to establish a respondent’s bad faith. 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.”). To support this assertion, Complainant points to the international trademark registrations of the MORGAN STANLEY mark, the fame of the mark, and the use made of the mark. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <morrganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page