Morgan Stanley v. Guerilla Freedom Fighter c/o
Claim Number: FA0708001061232
Complainant is Morgan Stanley (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133
Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deanwitter.mobi>, registered with GoDaddy.com.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 14, 2007, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <deanwitter.mobi> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <deanwitter.mobi> domain name is identical to Complainant’s DEAN WITTER mark.
2. Respondent does not have any rights or legitimate interests in the <deanwitter.mobi> domain name.
3. Respondent registered and used the <deanwitter.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers a full range of financial and investment services to clients throughout the world. Complainant is the product of the merger of two well-known financial services firms--Morgan Stanley Group, Inc. and Dean Witter, Discover & Co. Dean Witter, Discover & Co. was founded in 1924 and was a pioneer in providing financial services and products for individual investors, continually using the DEAN WITTER mark and related marks to promote its business. Complainant shortened its name simply to Morgan Stanley in 2002. Complainant holds a trademark registration for the DEAN WITTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,425,933 issued January 20, 1987). Complainant also owns several domain names that incorporate the DEAN WITTER mark.
Respondent registered the <deanwitter.mobi> domain name on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant’s registration of the DEAN WITTER mark with the
USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the initial burden lies with Complainant to prove that Respondent lacks rights and legitimate interests in the <deanwitter.mobi> domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint allows the
Panel to presume that Respondent lacks rights and legitimate interests in the
disputed domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant alleges that Respondent is not commonly known by the <deanwitter.mobi> domain name, which indicates that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). The Panel agrees with this allegation, as there is nothing in the record, including Respondent’s WHOIS information, to suggest that Respondent is commonly known by the disputed domain name. Furthermore, Complainant has not authorized Respondent to use its DEAN WITTER mark for any purpose. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <deanwitter.mobi> domain name resolves to a parked page that features no content besides advertisements and links sponsored by the registrar; this does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
Respondent’s lack of rights and legitimate interests in the <deanwitter.mobi> domain name is further evidenced by its offer to sell the disputed domain name to Complainant. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s failure to use the <deanwitter.mobi> domain name, which is identical to Complainant’s DEAN WITTER mark, for any purpose besides the “parked” page that currently resolves from the disputed domain name indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ (a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) the respondent failed to use the domain name and (2) it is clear that the respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the complainant).
Respondent’s offer to sell the <deanwitter.mobi> domain name to Complainant also indicates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deanwitter.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Dated: October 2, 2007
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