Morgan Stanley v. Private Registration
Claim Number: FA0909001284693
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 <morgansstanley.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@morgansstanley.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
1. Respondent’s <morgansstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morgansstanley.com> domain name.
3. Respondent registered and used the <morgansstanley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers its customers a wide
variety of financial products and services under its MORGAN STANLEY mark. Complainant holds several registrations for
the MORGAN STANLEY mark United States Patent and Trademark Office (“USPTO”)
(e.g., Reg. No. 1,707,196 issued
Respondent registered the <morgansstanley.com>
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 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.
The Panel finds Complainant has established rights in the
MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i) through registration of the
mark with the USPTO (e.g., Reg. No. 1,707,196 issued August 11, 1992). See
Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Complainant contends that Respondent’s <morgansstanley.com> domain name is confusingly similar to
Complainant’s MORGAN STANLEY mark.
Respondent’s domain name contains Complainant’s mark, omits a space,
adds the letter “s,” and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
addition of a single letter is not sufficient to negate a finding of confusing
similarity. See Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not
remove the respondent’s domain names from the realm of confusing similarity in
relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). In
addition, the Panel finds that the addition of a gTLD and omission of a space
between terms in a mark is irrelevant in distinguishing a mark from a disputed
domain name. See Bond & Co. Jewelers, Inc. v.
The
Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and
legitimate interests in the <morgansstanley.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds in this case that Complainant
has established a prima facie
case. Respondent has failed to submit a
response to these proceedings, however the Panel will
examine the record in consideration of Respondent’s potential rights and
legitimate interests under Policy ¶ 4(c).
See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Complainant contends that Respondent is neither commonly
known by the disputed
domain name nor licensed to register domain names using the MORGAN
STANLEY mark. The WHOIS information does not reflect Respondent has ever been
commonly known by the disputed domain name.
Therefore, the Panel finds Respondent is commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Complainant contends that Respondent is using the disputed domain
name to attract Internet users to the associated website containing various
links to third-party websites, some of which compete with Complainant. The Panel finds that intentionally diverting
Internet users to a competing website by using a domain name, which is
confusingly similar to a complainant’s mark is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4,
2001) (“Respondent's advertising of legal services and sale of law-related
books under Complainant's name is not a bona fide offering of goods and
services because Respondent is using a mark confusingly similar to the
Complainant's to sell competing goods.”).
In addition, Respondent’s use of a disputed domain name
including Complainant’s mark in its entirety with the mere addition of an
additional letter “s” constitutes typosquatting. The Panel finds that Respondent’s use of a
domain name that is a common misspelling of Complainant’s MORGAN STANLEY mark
to redirect Internet users seeking Complainant’s website fails to establish
rights or interests pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <morgansstanley.com>
domain name to display
links to third-party websites seeking to compete directly with Complainant is
further evidence of bad faith. The Panel
finds that a registered domain name used primarily to disrupt the business of a
competitor demonstrates bad faith regitration and use pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Complainant contends that Respondent is using the <morgansstanley.com> domain name in order to intentionally
attract Internet users to its website by creating a likelihood of confusion
with Complainant’s MORGAN STANLEY mark and offering third-party links to
competitor’s websites. The Panel infers
that Respondent receives click-through fees for diverting Internet users to
these websites. Therefore, pursuant to
Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name
constitutes bad faith registration and use.
See 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.’”); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Furthermore, Respondent has engaged in typosquatting through
its use of the disputed domain name,
which contains a common misspelling of Complainant’s MORGAN STANLEY mark. Therefore, the Panel finds Respondent’s use
of the disputed domain names constitutes bad faith registration and use
pursuant to Policy 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for
sale, FA 154528 (Nat. Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morgansstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 28, 2009
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