Morgan Stanley v. Morgan Stanley
Claim Number: FA0901001245123
Complainant is Morgan Stanley,
(“Complainant”) represented by Baila H.
Celedonia, of Cowan, Liebowitz &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleygpc.us>, registered with Godaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On January 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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.
1. Respondent’s <morganstanleygpc.us> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleygpc.us> domain name.
3. Respondent registered and used the <morganstanleygpc.us> 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 its clients through its 600
offices in over 37 countries.
Complainant has also registered its MORGAN STANLEY mark with the United
States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,707,196 issued
Respondent registered the disputed <morganstanleygpc.us>
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
The Panel finds that Complainant has
established sufficient rights in the MORGAN STANLEY mark through its registration
of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
domain name incorporates Complainant’s entire MORGAN STANLEY mark while adding
the letters “gpc.” The inclusion of the
country-code “.us” fails to add any distinguishing characteristic to the
disputed domain name. Moreover, the
insertion of the letters “gpc” likewise fails to distinguish the disputed
domain name. The Panel therefore finds
that the disputed domain name is confusingly similar to Complainant’s MORGAN
STANLEY mark pursuant to Policy ¶ 4(a)(i).
See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has asserted that Respondent lacks rights and legitimate interests in the <morganstanleygpc.us> domain name. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel finds that there is no evidence in the record to conclude
that Respondent owns any service marks or trademarks that reflect the <morganstanleygpc.us>
domain name. Therefore the Panel finds that Respondent does
not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014
(Nat. Arb. Forum Sept. 3, 2002) (holding that because respondent did not own
any trademarks or service marks reflecting the <pepsicola.us> domain
name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum
Respondent is using the <morganstanleygpc.us> domain name to resolve to a website that features links to websites offering products and services in direct competition with Complainant. Respondent presumably receives referral fees from the advertisers listed on its website. Thus, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Northwest 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 [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under UDRP ¶ 4(c)(i) nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
Despite Respondent’s listing in
the WHOIS information as “Morgan Stanley,” there is no corroborating evidence that would demonstrate that
Respondent is indeed commonly known by the disputed domain name. More significantly, Complainant argues that
Respondent lacks any license or permission to use Complainant’s mark. Thus, the Panel finds that Respondent lacks
rights and legitimate interests pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the <morganstanleygpc.us>
domain name to resolve to a website that features links to third-party websites
with products and services in direct competition with Complainant. The Panel therefore finds that Respondent’s
use of the disputed domain name is intended to disrupt the business of
Complainant pursuant to Policy ¶ 4(b)(iii).
See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent’s use of Complainant’s MORGAN STANLEY mark within the disputed domain name creates a likelihood of confusion as to the source and affiliation of Respondent’s website and the disputed domain name. Further, Respondent’s presumed receipt of referral fees from advertisers listed on its website justifies the conclusion that Respondent registered the disputed domain name to garner commercial benefits. Therefore, the Panel finds that Respondent engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to UDRP ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleygpc.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 10, 2009
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