Morgan Stanley Smith Barney Holdings LLC v. ms-sb ms
Claim Number: FA0912001299536
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 <ms-sb.com>, registered with Dotname Korea Corp.
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
After numerous requests, the Registrar, Dotname Korea Corp., has not confirmed to the National Arbitration that the <ms-sb.com> domain name is registered with Dotname Korea Corp. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On January 7, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of Janauary 27, 2010 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ms-sb.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and SMITH BARNEY marks.
2. Respondent does not have any rights or legitimate interests in the <ms-sb.com> domain name.
3. Respondent registered and used the <ms-sb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley Smith Barney Holdins LLC, is a
joint venture of Morgan Stanley and Citigroup Inc. Morgan Stanley and Citigroup first announce
the plans to create Complainant on
Respondent, ms-sm ms, registered the <ms-sb.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.
Complainant registered its SMITH BARNEY mark (e.g., Reg. No. 1986596 issued
Complainant claims the <ms-sb.com> domain name is confusingly
similar to Complainant’s MORGAN STANLEY and SMITH BARNEY marks. The disputed domain name combines the
accronyms for both of Complainant’s marks, “MS” is used for MORGAN STANLEY and
“sb” refers to SMITH BARNEY. Respondent
further adds a hyphen and a generic top-level domain (“gTLD”) to Complainant’
marks. The Panel finds that the
combination of Complainant’s marks, the use of accronyms, the addition of a
hyphen, and the addition of a gTLD all fail to adequately distinguish the
disputed domain name from Complainant’s marks.
See Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined the complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see also Algemeen
Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding
confusing similarity where “[d]istinctive elements of the Complainant’s marks,
notably the acronym ANP, are reproduced entirely in the domain name.”); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he
abbreviation of the trade-mark which the public has used and adopted as
designating the product of the [trademark owner] is equally as much to be
protected as the trademark itself . . .”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb.
Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is
irrelevant in the determination of confusing similarity pursuant to Policy ¶
4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <ms-sb.com> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) after Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
The WHOIS information lists the domain name registrant as “ms-sm ms.” However, Respondent has offered no evidence further suggesting that Respondent is commonly known by the <ms-sb.com> domain name. Moreover, Complainant asserts that Respondent is not authorized to use the <ms-sb.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <ms-sb.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent uses the <ms-sb.com> domain name to resolve to Morgan Stanley’s website announcing the creation of Complainant. Complainant argues that Respondent is attempting to pass itself off as Complainant. The Panel finds Respondent’s attempt to pass iteslf off as Complainant is not bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent attempts to create confusion as to Complainant’s sponsorship or affiliation with the disputed domain name. Respondent’s <ms-sb.com> domain name resolves to w website bearing Morgan Stanley’s logo and announcing the creation of Complainant. Respondent attempts to pass itself off as Complainant, presumably for profit. Therefore, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(i). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Respondent registered the <ms-sb.com>
domain name on
Therefore, 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 <ms-sb.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 16, 2010
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