Morgan Stanley Smith Barney Holdings LLC v. SmithBarneyMS c/o Andrew Yeoh
Claim Number: FA0912001298237
Complainant is Morgan Stanley Smith Barney Holdings LLC (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithbarneyms.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2009.
On December 10, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <smithbarneyms.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a joint venture recently created by Morgan Stanley and Citigroup, Inc.
Complainant is the owner by assignment of numerous SMITH BARNEY marks.
Complainant holds a registration of the SMITH BARNEY mark with several governmental trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,986,596, issued July 16, 1996).
Respondent registered the <smithbarneyms.com> domain name on June 3, 2009.
The disputed domain name resolves to website that displays an e-mail login page that asks for Internet users’ e-mail addresses and passwords.
Respondent’s <smithbarneyms.com> domain name is confusingly similar to Complainant’s SMITH BARNEY mark.
Respondent does not have any rights to or legitimate interests in the domain name <smithbarneyms.com>.
Respondent registered and uses the <smithbarneyms.com> domain name in bad faith.
B. Respondent failed to submit a formal Response to the Complaint in this proceeding. However, in e-mail correspondence addressed to the National Arbitration Forum, Respondent recited as follows:
I hereby relinquish the domain-name in question to the Complainant. I approve the transfer of the domain-name SmithBarneyMS.com to Morgan Stanley Smith Barney Holdings LLC.
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Notwithstanding the foregoing, 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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain
name registration upon the written instructions of the parties to a UDRP
proceeding without the need for otherwise required findings and conclusions
(see Malev Hungarian Airlines, Ltd. v.
Vertical Axis Inc., FA 212653 (Nat. Ar. Forum
Respondent’s informal e-mail response filed in this proceeding does not contest the material allegations of the Complaint, and, in particular it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Rather Respondent has expressly consented to the transfer of the subject domain name to Complainant as demanded in the Complaint. Thus the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.
Accordingly, it is Ordered that the <smithbarneyms.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 25, 2010
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