national arbitration forum

 

DECISION

 

Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC

Claim Number: FA0902001246046

 

PARTIES

Complainant is Morgan Stanley (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Israrul Hasan c/o Manhattan Consulting Partners, LLC (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <morganstanleybankonline.com>, registered with 1 & 1 Internet Ag.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 5, 2009.

 

On February 5, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <morganstanleybankonline.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name.  1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 February 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2009 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@morganstanleybankonline.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <morganstanleybankonline.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <morganstanleybankonline.com> domain name.

 

3.      Respondent registered and used the <morganstanleybankonline.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Morgan Stanley, is a financial services company that was founded in 1935.  Complainant holds several registrations for the MORGAN STANLEY mark (i.e. Reg. No. 1,707,196 issued August 11, 1992) with the United States Patent and Trademark Office (“USPTO”).

 

Respondent registered the <morganstanleybankonline.com> domain name on December 17, 2008.  As of January 5, 2009, the disputed domain name resolved to an “under construction” website.  As of January 12, 2009, the disputed domain name did not resolve to a website at all.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the MORGAN STANLEY mark with the USPTO is sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i).  See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The <morganstanleybankonline.com> domain name contains Complainant’s MORGAN STANLEY mark followed by the generic terms “bank” and “online” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the additions of a gTLD and generic terms that have an obvious relation to Complainant’s business are insufficient to overcome the confusing similarity that results from using Complainant’s MORGAN STANLEY mark.  Therefore, the Panel finds the <morganstanleybankonline.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).

 

The Panel finds that Complainant has satisfied Policy ¶4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <morganstanleybankonline.com> domain name pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <morganstanleybankonline.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the MORGAN STANLEY mark, and the WHOIS information identifies Respondent as “Israrul Hasan c/o Manhattan Consulting Partners, LLC.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

As of January 5, 2009 the disputed domain name resolved to an “under construction” website.  As of January 12, 2009, the disputed domain name did not resolve to a website at all.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use and therefore does not establish rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).

 

The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel chooses to consider the totality of the circumstances when conducting its Policy ¶ 4(a)(iii) analysis.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

The Panel finds that Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <morganstanleybankonline.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  March 24, 2009

 

 

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