Morgan Stanley v. Comdot Internet Services Private Limited
Claim Number: FA0804001178866
Complainant is Morgan
Stanley (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com>, registered with Lead Networks Domains PVT. Ltd.
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 May 7, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of May 27, 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 email@example.com, and firstname.lastname@example.org 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks.
2. Respondent does not have any rights or legitimate interests in the <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com> domain names.
3. Respondent registered and used the <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is a financial investment
services provider that operates in over 28 countries including the
Respondent registered the <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com> domain names on March 30, 2008, and is currently using these disputed domain names to resolve to websites that feature third-party advertisements, some of which compete directly with Complainant’s financial services.
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 set forth evidence indicating that it registered both the MORGAN STANLEY and CLIENTSERV marks with the USPTO. The Panel finds that Complainant’s registrations of the marks with the USPTO are sufficient to grant standing under the UDRP and Policy ¶ 4(a)(i) as such registration signifies Complainant’s rights in the marks. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com>
domain names are virtually seamless images of Complainant’s MORGAN STANLEY and
CLIENTSERV marks, as the disputed domain names incorporate both marks in their
entirety and respective order except for the minor changes such as the
inclusion of the generic prefix “www,” the omission of the “v” from
“ClientServ,” and the addition of the generic top-level domain (“gTLD”) “.com.” First, the addition of the generic prefix
“www” to the <wwwmorganstanleyclientserv.com> domain name cannot be said to
distinguish the disputed domain name, as virtually every Uniform Resource
Locator (“url”) will include this prefix for the purposes of Internet locales. In fact, such an addition serves to increase
the confusing similarity between the <wwwmorganstanleyclientserv.com> domain name and Complainant’s marks: not
only are Complainant’s marks the dominant features of the disputed domain name,
but the “www” prefix exploits the common typographical error of Internet users
who omit the foundational period between the prefix and the content of the
disputed domain name. Furthermore, the
omission of the “v” in the <morganstanleyclientser.com> domain name
utterly fails to distinguish the disputed domain name as Complainant’s
MORGAN STANLEY mark remains wholly intact and dominant, even if Complainant’s
CLIENTSERV mark was diminished by the loss of one “v.” Third, the addition of the generic top-level
domain “.com” is immaterial in a Policy ¶ 4(a)(i) analysis, and serves no use
here. Finally, the Panel takes
particular note of the fact that the disputed domain names are virtual
reproductions of Complainant’s <morganstanleyclientserv.com> domain name.
Therefore, the Panel finds that the <wwwmorganstanleyclientserv.com>
and <morganstanleyclientser.com> domain names are
confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks
pursuant to Policy ¶ 4(a)(i). See Neiman
Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in both disputed domain names. Because Complainant has hereby set forth an
adequate prima facie case supporting
its allegations, Respondent receives the burden of demonstrating its rights or
legitimate interests under Policy ¶ 4(a)(ii).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s disputed domain names achieve nothing more than wily diversion of Internet users seeking Complainant’s established financial services to the presumably unintended location of Respondent’s website, whose sole features are third-party advertisements that compete with Complainant’s business. Respondent presumably receives commercial and financial benefit from these displays through the payment of referral fees. Given the robust similarity of the disputed domain names and Complainant’s marks and <morganstanleyclientserv.com> domain name, it is a reasonable assumption that Respondent’s intended use of the disputed domain names were not independent and distinct, but rather geared towards Complainant’s goodwill surrounding its marks. Such an intent would definitively undermine any argument by Respondent for a bona fide or legitimate noncommercial usage. However, Respondent failed to submit any arguments in this proceeding, much less one in this regard. The Panel therefore finds that Respondent’s use of the disputed domain names in this fashion unreservedly fails to 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent has not submitted a Response in this proceeding. Implicit in such is the fact that there is no evidence in the record to conclude or even suggest that Respondent is commonly known by the disputed domain names, or even has license or permission from Complainant to reflect Complainant’s marks in such a fashion. In fact, the WHOIS domain name registration information lists the registrant of the disputed domain names as “Comdot Internet Services Private Limited,” which fails to connote any resemblance between Respondent and the disputed domain names. The Panel therefore finds that Complainant lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); 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).
Though Complainant has not argued as such, Respondent’s
registration of the disputed domain names bears the conspicuous hallmarks of
“typosquatting.” This refers to the
registration of disputed domain names that keenly seeks to deceptively exploit
the typographical mistakes of Internet users, most commonly the omission of the
period after the generic “www” prefix, or the unintended error of substituting
one letter in the intended domain name for another. What exists in this case are two
cunningly-designed illustrations of both.
Internet users who seek Complainant’s legitimate
<morganstanleyclientserv.com> domain name—which also reflects
Complainant’s marks—could easily fall into Respondent’s trap by committing one
of these two common typos. Such users
would then be whisked away to Respondent’s website, an unintended trip created
by Respondent’s registration of the disputed domain names. The Panel finds that Respondent’s engagement
in typosquatting is clear evidence of its lack of rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of the complainant’s DINERS CLUB mark, was
evidence in and of itself that the respondent lacks rights or legitimate
interests in the disputed domain name vis á vis the complainant); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names are highly alike to
Complainant’s marks and domain name.
Given that the majority of the third-party advertisements placed on
Respondent’s resolving website correspond to Complainant’s direct competitors,
the Panel finds that such evidence indicates Respondent’s intent to disrupt
Complainant’s business and take advantage of Complainant’s goodwill surrounding
its marks. The Panel therefore finds
that Respondent engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum
Respondent’s disputed domain names, confusingly similar to Complainant’s marks, siphon Internet users to its website, wherein Complainant’s competitors have advertisements. Respondent’s minor variations from Complainant’s marks in the disputed domain names have thereby created a very substantial likelihood of confusion as to the source and affiliation of the disputed domain names and corresponding website. Respondent benefits from such a likelihood of confusion, as it receives referral fees for these advertisements that are subjected to the diverted Internet users. The Panel finds this clear evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); 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.’”).
The Panel is not limited in its bad faith analysis to the four elements in Policy ¶ 4(b); it may consider other circumstances as well. Here, Complainant alleged that Respondent had at least constructive knowledge of Complainant’s trademark registration and corresponding rights. Notably, both of Complainant’s marks were registered with the USPTO well before Respondent registered the disputed domain names in 2008. It is rather difficult to infer that Respondent lacked actual notice of Complainant’s trademark rights, given the uncanny resemblance of the disputed domain names to Complainant’s marks and domain name, the Panel finds it sufficient to note that Complainant’s trademark registrations with the USPTO constituted more than adequate constructive notice. The Panel finds that Respondent’s registration and use of the disputed domain names, in light of this notice, constitutes bad faith under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).
Respondent’s disputed domain names are unambiguous instances of typosquatting. Respondent clearly intended to maximize the potential of deceptively redirecting Internet users seeking Complainant’s financial services by registering not one, but two confusingly similar disputed domain names that focus on two common typographical errors. The Panel notes that Respondent’s usage of the disputed domain names is to subject these innocent Internet users to a flurry of third-party advertisements. Given that these Internet users are drawn to these advertisements through the deception of Respondent, it easily allows a conclusion that Respondent did not inadvertently register these disputed domain names, much less acquire them in good faith. The Panel finds that Respondent has engaged in typosquatting, and that such an act highly demonstrates its bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“In typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing [<wwwmedline.com>] domain name.”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel 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 <wwwmorganstanleyclientserv.com> and <morganstanleyclientser.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 9, 2008
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