Morgan Stanley v. zhangzhaoning
Claim Number: FA0708001070182
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 <morgan-stanley.mobi>, registered with OnlineNIC, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 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 <morgan-stanley.mobi> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morgan-stanley.mobi> domain name.
3. Respondent registered and used the <morgan-stanley.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 a variety of clients through over 600 offices in thirty-two countries. Since as early as 1935, Complainant has spent considerable time and effort establishing and promoting the now well-known MORGAN STANLEY mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (Reg. No. 1,707,196 August 11, 1992).
Respondent registered the <morgan-stanley.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 has established rights in the MORGAN STANLEY
mark. Complainant owns a trademark
registration with the USPTO. The Panel
finds that where Complainant has submitted evidence of a valid trademark
registration, Policy ¶ 4(a)(i) has been satisfied. See Lockheed
Martin Corp. v. Hoffman, FA 874152
(Nat. Arb. Forum
domain name is confusingly similar to Complainant’s mark. Respondent’s domain name contains
Complainant’s entire MORGAN STANLEY mark and simply adds a hyphen and the
generic top-level domain (“gTLD”) “.mobi.”
The Panel finds that Respondent’s additions to an otherwise unchanged
mark fails to distinguish Respondent’s domain name from Complainant’s mark in
any meaningful way for purposes of Policy ¶ 4(a)(i). See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
contends that Respondent lacks rights to or legitimate interests in the <morgan-stanley.mobi> domain name.
Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the
burden shifts to Respondent to set forth concrete evidence that it does possess
rights to or legitimate interests in the disputed domain name. The Panel
finds that Complainant has established a prima
facie case in the matter at hand. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
Complainant contends that the disputed domain name, <morgan-stanley.mobi>, currently resolves to a website that contains no content. Without evidence of demonstrable preparations to use the disputed domain name, the Panel finds that Respondent’s use is not 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 Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims).
Furthermore, Complainant contends that Respondent is neither commonly known by the <morgan-stanley.mobi> domain name nor authorized to register domain names featuring Complainant’s MORGAN STANLEY mark in any way. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in the domain name in accordance with Policy ¶ 4(c)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and used the disputed domain
name in bad faith. The disputed domain name does not currently resolve to
an active website. Respondent presented no evidence of preparations to
use the disputed domain name. For these reasons, the Panel finds that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
The Panel finds that Complainant has satisfied 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 <morgan-stanley.mobi> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 16, 2007
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