DECISION

 

Morgan Stanley v. Hao Wu

Claim Number: FA2401002077465

PARTIES

Complainant is Morgan Stanley ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Hao Wu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <morganstanleyprofessor.life> and <morganstanleyinvest.life>, registered with NameSilo, LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 3, 2024; Forum received payment on January 3, 2024.

 

On January 3, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 January 4, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2024 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@morganstanleyprofessor.life, postmaster@morganstanleyinvest.life. Also on January 4, 2024, 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 January 25, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Morgan Stanley, offers financial, investment, and wealth management services.

 

Complainant asserts rights to the MORGAN STANLEY mark based upon registration with the United States Patent and Trademark Office ("USPTO").

 

Respondent's <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names are each virtually identical or confusingly similar to Complainant's mark as each contain the MORGAN STANLEY mark in its entirety, merely adding generic descriptive terms and the generic top-level domain ".life" to form the at-issue domain name.

 

Respondent does not have rights or legitimate interests in the <morganstanleyprofessor.life> or <morganstanleyinvest.life> domain name. Respondent is not licensed or authorized to use Complainant's MORGAN STANLEY mark and is not commonly known by either at-issue domain name. Respondent does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to pose as Complainant as part of a scheme to impersonate Complainant by promoting or offering purported investment management or financial advisory services that are nearly identical to those provided by Complainant and directing internet users to join WhatsApp groups in connection with Respondent's purported investment opportunities or financial advisory services. Upon information and belief <morganstanleyinvest.life> promoted a WhatsApp group that displayed a photo of Complainant's Chief Investment Officer and used the group title "Morgan Stanley Investment Group",  and <morganstanleyprofessor.life> led to one impersonating Marc Boughton of CVC Capital in the UK (a competitor of Complainant).

 

Respondent registered and used the <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names in bad faith. Respondent registered and used the at issue domain names with knowledge of Complainant's rights in the MORGAN STANLEY mark when it registered the domain names. Complainant's trademarks are so well know that it would be difficult to provide a legitimate explanation for registering the domain names. Respondent uses the at-issue domain names to impersonate Complainant and purports to offer financial services related to Complainant via the at-issue domain names. Additionally, Respondent registered and uses the at-issue domain names to create initial interest confusion. Respondent had constructive knowledge of Complainant's marks when registering the domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the MORGAN STANLEY mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain names after Complainant acquired rights in the MORGAN STANLEY trademark.

 

Respondent registered and used the at-issue domain names to impersonate Complainant and to purport to offer services related to Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.

 

Complainant's registration of the MORGAN STANLEY mark with the USPTO sufficiently demonstrates Complainant's 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.").

 

Respondent's <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names each contain Complainant's MORGAN STANLEY trademark less its domain name impermissible space, followed by a descriptive term, with all followed by the ".life" top-level domain name. Respondent's additions to Complainant's trademark in creating the at-issue domain names fail to distinguish either domain name from Complainant's MORGAN STANLEY trademark. Therefore, the Panel concludes that Respondent's <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names are each confusingly similar to Complainant's MORGAN STANLEY trademark pursuant to Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).

 

The WHOIS information for the at-issue domain names identifies the domain names' registrant as "Hao Wu" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either <morganstanleyprofessor.life> or <morganstanleyinvest.life>. The Panel therefore concludes that Respondent is not commonly known by either <morganstanleyprofessor.life> or <morganstanleyinvest.life> for the purposes of Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where "the WHOIS of record identifies the Respondent as 'Bhawana Chandel,' and no information in the record shows that Respondent was authorized to use Complainant's mark in any way.").

 

Respondent uses <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names to impersonate Complainant and a related third-party competitor and to address websites offering financial services closely related to those services offered by Complainant. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016)(finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).");see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting internet users to a competing commercial site);see also, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) ("Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of each at-issue domain names under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

 

First, Respondent registered <morganstanleyprofessor.life> and <morganstanleyinvest.life> knowing that Complainant had trademark rights in MORGAN STANLEY. Respondent's prior knowledge of Complainant's trademark is evident from the notoriety of Complainant's mark and from Respondent's efforts to pass itself off as Complainant. Notably, Respondent's prior knowledge of Complainant's MORGAN STANLEY trademark indicates that Respondent registered and used the <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). In fact, it would be difficult to posit any benign reason supporting Respondent's registration and use of either <morganstanleyprofessor.life> or <morganstanleyinvest.life>. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant's well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith); see also, Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) ("Respondent's use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)").

 

Moreover, Respondent uses the at-issue confusingly similar domain names to pose as being related to Complainant in furtherance of deceiving <morganstanleyprofessor.life> and <morganstanleyinvest.life> visitors into falsely believing the domain names/websites were sponsored by, or somehow related to, Complainant. Such use of <morganstanleyprofessor.life> and <morganstanleyinvest.life> is disruptive to Complainant's business and seeks to capitalize on the confusion Respondent caused regarding the domain names and Complainant's trademark. Respondent's use of the domain names in this manner indicates Respondent's bad faith registration and use of the at-issue domain names under Policy ¶¶ 4(a)(iii) and (iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <morganstanleyprofessor.life> and <morganstanleyinvest.life> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Paul M. DeCicco, Panelist

Dated: January 25, 2024