Morgan Stanley v. Wan-Fu China, Ltd.
Claim Number: FA0709001081669
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 <morgonstanleycard.com>, registered with Belgiumdomains, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2007.
On September 26, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <morgonstanleycard.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 October 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 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.
On November 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant, Morgan Stanley, provides financial and investment services globally through 600 offices in 28 countries.
Complainant and its predecessors have used the MORGAN STANLEY mark since as early as 1935.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its family of marks, including the MORGAN STANLEY service mark (Reg. No. 1,707,196, issued August 11, 1992).
Complainant also has registered several domain names, including <morganstanley.com> and <morganstanleycard.com>.
Respondent registered the contested <morgonstanleycard.com> domain name on September 23, 2007.
The website Respondent operated at the disputed domain name displays links to the third-party websites of Complainant’s competitors, through which Respondent presumably generates click-through revenue.
Respondent’s <morgonstanleycard.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
Respondent does not have any rights or legitimate interests in the domain name <morgonstanleycard.com>.
Respondent registered and uses the <morgonstanleycard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Policy ¶ 4(a)(i) requires Complainant first to establish by proof its rights in the MORGAN STANLEY mark. Complainant has met its burden through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <morgonstanleycard.com> domain name incorporates Complainant’s MORGAN STANLEY mark, misspelling “MORGAN” by replacing the “a” with an “o,” which is phonetically identical. Further, the disputed domain name merely adds the generic descriptive term “card,” which reflects an element of Complainant’s business. The disputed domain name is confusingly similar to the MORGAN STANLEY mark within the meaning of the Policy because the editorial changes made to the mark are insufficient to distinguish the domain name from the mark. See Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in that mark with the letter “e”); further see Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that addition of the term “assurance” to a complainant’s AIG mark failed sufficiently to differentiate a domain name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to that complainant’s business).
The contested domain name also appends the generic top-level domain (“gTLD”) “.com.” This addition does not affect the outcome under the Policy. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com,” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of establishing prima facie that Respondent lacks rights to or legitimate interests in the disputed domain name. Complainant’s allegation that Respondent lacks rights and legitimate interests adequately meets this requirement, shifting the burden to Respondent to establish that such rights or interests nonetheless exist. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002.
Respondent has failed to produce a Response to the Complaint in this proceeding. Its failure to provide a Response permits the presumption that Respondent lacks all rights and interests in the disputed domain name under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
See also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate rights or legitimate interests in a domain name).
Although no further inquiry is required, we will nonetheless examine the evidence to determine if there is ant basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
We begin our inquiry by noting that there is nothing in the record, including the WHOIS database information, suggesting that Respondent, “Wan-Fu China, Ltd.,” is commonly known by the <morgonstanleycard.com> domain name. Accordingly, we conclude that Respondent holds no rights and legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because that respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
We also observe that there is
no dispute that Respondent uses the disputed domain name to generate
click-through revenue by diverting Internet users to the websites of
Complainant’s competitors. We concludes from
this that Respondent is unable to establish rights or legitimate interests
under Policy ¶¶ 4(c)(i) or 4(c)(iii) because Respondent’s use of the
disputed domain name cannot be characterized as either a bona fide offering of goods or services or a legitimate
noncommercial use. See Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name
to redirect Internet users to commercial websites unrelated to a complainant,
and presumably with the purpose of earning a commission or pay-per-click
referral fee, did not evidence rights or legitimate interests in the domain
name); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel thus determines that Complainant has met the requirements of Policy ¶ 4(a)(ii).
It is evident that Respondent capitalizes on the confusion created by the disputed domain name’s similarity to Complainant’s mark to attract Internet users for its commercial gain through the generation of pay-per-click revenues. We find this activity to evidence Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003):
Respondent has attempted to commercially benefit from the misleading … [contested]… domain name by linking the domain name to … websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
See also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”
In addition, it appears that Respondent registered the <morgonstanleycard.com> domain name with at least constructive knowledge of Complainant’s rights in the MORGAN STANLEY service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <morgonstanleycard.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2007
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