Morgan
Stanley v. n.a.
Claim Number: FA0804001176572
PARTIES
Complainant is Morgan Stanley (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleycapital.com> (the “Domain
Name”), registered with Godaddy.com, Inc.
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.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 7, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 9, 2008.
On April 7, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <morganstanleycapital.com> Domain Name
is registered with Godaddy.com, Inc. and
that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 11, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 1, 2008 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 postmaster@morganstanleycapital.com by e-mail.
A timely Response was received by e-mail on May 1, 2008. However, the
Response was deemed deficient pursuant to ICANN Rule 5 because a hard copy of
the Response was not received prior to the Response deadline.
Complainant submitted a timely Additional Submission in compliance with
the National Arbitration Forum Supplemental Rule 7 on May 6, 2008. Respondent submitted a timely Additional
submission which was received on May 13, 2008.
As to the
issue of Respondent’s failure to file a hard copy of his Response, the Panelist
will nonetheless accept the Response, following the rationale of the decision
in J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat.
Arb. Forum Oct. 17, 2003) (where Respondent submitted a timely response electronically,
but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”).
On May 8, 2008, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Christopher Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
I have summarized the parties’ contentions below.
A. Complainant
Complainant, Morgan Stanley, is a financial services company offering a
range of institutional, retail and advisory services through over 600 offices
in 28 countries. Complainant owns the
MORGAN STANLEY family of trademarks, with registrations in countries around the
world including the
Complainant states that the Domain Name in dispute,
<morganstanleycapital.com> is virtually identical or confusingly similar Complainant’s
MORGAN STANLEY trademark and to its <morganstanley.com> domain name.
Complainant contends that Respondent does not have any rights or
legitimate interests in the Domain Name.
Respondent has no relevant trademark rights, does not engage in any
business under the Morgan Stanley name, and is not commonly known by the Domain
Name.
Complainant states that given the worldwide prior use of the MORGAN
STANLEY family of marks, Respondent should be held to have actual or
constructive knowledge of them.
Respondent thus can establish no legitimate rights in the Domain Name,
and registered it in order to capitalize on the fame and reputation of
Complainant’s marks.
Complainant submitted documentary evidence that Respondent’s Domain
Name previously resolved to Complainant’s genuine website. After Complainant sent a demand letter to
Respondent, the content of the website changed: the Domain Name began to
resolve to a landing-page website with links to third-party sites offering
competing services. Complainant suggests
that Respondent may receive click-though fees for use of the Domain Name, and
that this is not a bona fide offering of goods or services under the UDRP Policy. Last, Complainant highlights that Respondent
admitted the Domain Name registration is “[J]us [sic] some practical joke [sic]
played up by my friends.”
Complainant contends that the Domain Name was registered and has been
used in bad faith. Because Complainant’s
trademark is well-known, Respondent is presumed to have knowledge of Complainant’s
mark and this knowledge indicates Respondent’s bad faith use and
registration. Respondent’s site
redirects Internet users to websites that contain hyperlinks that are in direct
competition with Complainant. This
constitutes disruption of Complainant’s business and qualifies as bad faith
registration and use. The receipt of
click-through fees resulting from use of Complainant’s mark to attract Internet
users also evinces bad faith registration and use. Complainant also states that Respondent
offered to consider the possible sale of the Domain Name in an email, stating
“If you want to buy it, it is fine!” Finally,
Complainant states that Respondent has listed false registration information
for the Domain Name.
B. Respondent
Respondent states at the outset of his
submission that “I sincerely apologize to Complainant if it believes that its
marks are being infringed by the said [Domain Name]. He
suggests that he obtained the Domain Name under a “random search on GoDaddy…” He indicates that he is in the process of
applying for a PhD degree in finance and the Domain Name is “for future
academic use in the field of finance.”
Respondent indicates that when he received a letter from Complainant’s
lawyers, he initially suspected that “it was a hoax” and replied that he would
not turn over the Domain Name to them.
He admits that he stated “if they want it, they can just buy it.” He maintains that he intended no bad faith in
using the Domain Name and has no website or business related to Complainant,
and that his interests are purely “academic interests.”
C. Additional Submissions
Complainant’s additional submission rebuts Respondent’s claims. Complainant states that Respondent’s own
words do not support the contention that he obtained the Domain Name through a
random search on GoDaddy. As to
Respondent’s claim that he is applying to begin studies for a PhD in finance,
Complainant contends that any use of the Domain Name in this area “is certain
to cause confusion with Complainant’s MORGAN STANLEY mark.” Even if Respondent is not planning to use the
Domain Name in connection with academics, there is no legitimate use Respondent
could make of it that would not lead to confusions with Complainant’s MORGAN
STANLEY mark, which is on of the most famous marks in the financial field. Complainant suggests that “[g]iven that
Respondent seems to indicate his willingness to transfer the subject domain
name to Complainant, he should arrange to do so….”
Respondent’s Additional Submission responds to Complainant’s last
arguments. Respondent refers to certain
evidence in support of showing that he has indeed applied for a doctorate in law
and finance at the
FINDINGS
Complainant, Morgan Stanley, is the owner of
the well-known family of MORGAN STANLEY trademarks.
Respondent registered the Domain Name, <morganstanleycapital.com> on
March 7, 2008. As of the date of this
decision, Respondent is using the Domain Name as a landing page that
includes pay-per-click advertisements and links to third-party web sites, all
of which relate to financial services.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
The Panelist finds that Complainant has
established its rights in the well-known MORGAN STANLEY trademarks. Respondent does not make any assertions or arguments in this regard. The Panelist finds that the Domain Name is
confusingly similar to Complainant’s MORGAN STANLEY mark, merely adding the
generic word “capital” to Complainant’s mark.
Complainant has
therefore satisfied the first required element of the Policy, ¶ 4(a)(i).
Complainant claims that Respondent has no
rights or legitimate interests in the Domain Name. As noted above, Complainant must prove that Respondent
has no such rights or legitimate interests.
Once a complainant establishes a prima
facie case against a respondent in relation to this element, the burden is
on Respondent to provide concrete evidence of its right or legitimate interests
under ¶ 4(c) of the Policy.
In this case, Complainant states that
Respondent has no connection with Complainant, is not commonly known by the
Domain Name, and has no rights to use the Domain Name. Complainant has submitted evidence that Respondent
indicated registration of the Domain Name was a “hoax.” Complainant also alleges Respondent
was previously using the Domain Name to
resolve to Complainant’s website. In
this case Respondent’s own inconsistent submissions, with lack of any extrinsic
evidence in support, demonstrate that he has no rights or legitimate interests
in the Domain Name. Respondent appears
to be a student, although this is not completely clear. Respondent suggests that he may wish to use
the Domain Name for fair use “academic purposes,” but currently it is connected
to a pay-per-click website. Added to
these factors is the concern of incorrect registration details for the Domain
Name: the registrant is listed in the WHOIS records as “n.a.”
The Panel finds Respondent’s use of the
Domain Name 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). Given the widespread fame of the MORGAN
STANLEY family of trademarks in the financial services sector, the Domain Name <morganstanleycapital.com>
encompasses entirely a mark which is exclusively referable to Complainant. Respondent appears to admit this, as he has
offered his “sincere apology to Complainant and [would] turn over the name in
dispute without prejudice.” Accordingly,
the Panelist finds that Complainant has satisfied its burden under the second
factor of the Policy.
Complainant contends that the Domain Name was registered and has been used in bad faith. Because Complainant’s trademark is well-known, Complainant urges that Respondent is presumed to have knowledge of Complainant’s mark and that this knowledge indicates Respondent’s bad faith use and registration. The Panelist finds that there is evidence, through Respondent’s own submissions, that he was aware of Complainant and its MORGAN STANLEY name and brands. Thus, it may be concluded that Respondent targeted the Morgan Stanley name when it registered the Domain Name. Complainant also contends Respondent is currently using the Domain Name, which is confusingly similar to Complainant’s well-known MORGAN STANLEY mark, to display links to third-party websites which offer services that compete with Complainant’s business. The Panel finds that this use of the Domain Name constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii), even though Respondent has suggested his registration was merely a hoax, prank or for academic interests. Complainant contends Respondent offered to sell the Domain Name and offers e-mails in support. Respondent replied that he did not initiate these emails, and that he has not acted in bad faith, and his interest is purely an academic one. The Panel finds that Respondent has not submitted evidence of any legitimate use (or preparations to use) the Domain Name in support of academic interests. Instead, the Domain Name merely resolves to a website with links to websites offering competing services. While it appears that this Respondent was not fully informed of the responsibilities associated with registering a domain name – under the ICANN system, each registrant must represent that to the best of his knowledge the registration of the domain name, and the manner in which it is used, does not infringe the legal rights of any third-party – this cannot excuse Respondent from its abusive registration. Accordingly, the Panel finds that Respondent registered and used the Domain Name in bad faith.
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 <morganstanleycapital.com> Domain Name
be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: May 22, 2008
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