Morgan Stanley v. Domain Admin c/o Taranga Services Pty Ltd
Claim Number: FA1002001306534
Complainant is Morgan Stanley (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Domain Admin c/o Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstandley.com>, registered with Moniker.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2010.
On February 10, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <morganstandley.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 17, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 9, 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 postmaster@morganstandley.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 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morganstandley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstandley.com> domain name.
3. Respondent registered and used the <morganstandley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is a recognized global provider of financial and investment services. Complainant owns multiple trademark registration for the MORGAN STANLEY and related marks, both with the United States Patent and Trademark Office (“USPTO”) and foreign trademark authorities (e.g., U.S. Reg. No. 1,707,196 issued August 11, 1992).
Respondent, Domain Admin c/o Taranga Services Pty Ltd, registered the <morganstandley.com> domain name on November 26, 2005. Respondent’s disputed domain name resolves to a portal website featuring prominent links related to Morgan Stanley, as well as links to other related products and services.
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 owns multiple trademark registrations for the MORGAN STANLEY and related marks worldwide and with the USPTO (e.g., U.S. Reg. No. 1,707,196 issued August 11, 1992). The Panel finds that registration of a trademark with the USPTO is sufficient to establish Complainant’s rights in the mark, even when the Respondent operates in a country outside the United States. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that Respondent’s <morganstandley.com> disputed domain
name is confusingly similar to Complainant’s MORGAN STANLEY mark. The only differences between Complainant’s
mark and the disputed domain are the addition of a “d” in “Stanley,” the
deletion of the spaces between the words, and the addition of the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that adding a single letter into Complainant’s mark fails to
differentiate the disputed domain name from Complainant’s mark. See
Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs
by only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see also 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).”).
Additionally, deletion of spaces and the affixation of a gTLD are
requirements for domain names and therefore do not influence the Policy ¶ 4(a)(i) analysis regarding confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec.
31, 2007) (finding that “spaces are impermissible and a generic top-level
domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding
<vindiesel.com> to be identical to complainant’s mark because “simply
eliminat[ing] the space between terms and add[ing] the generic top-level domain
(“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name
from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Therefore, the Panel finds that Respondent’s
disputed domain name <morganstandley.com>
is confusingly similar to Complainant’s MORGAN STANLEY mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(c) requires Complainant to first present a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name. Since the Panel finds that
Complainant has adequately established a prima
facie case, the burden shifts to Respondent to demonstrate that it does
have rights and legitimate interests in the disputed domain name. In light of Respondent’s failure to respond
to Complainant’s allegations and carry its burden in proving rights and
legitimate interests, the Panel may assume that Respondent does not dispute
Complainant’s allegations and accordingly has no rights and legitimate
interests in the disputed domain name. See 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.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”). The Panel elects,
however, to consider all the evidence presented to determine whether Respondent
has any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name because the WHOIS information does not reflect any connection between Respondent and the disputed domain name. The Panel finds that this fact, without other evidence showing that Respondent is commonly known by the disputed domain name, is evidence that Respondent accordingly lacks rights and legitimate interests in the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a page prominently featuring links for Complainant’s services and smaller links for related products and services. This page acts as a portal site, redirecting Internet users to other third-party sites after they click on any of the links. The Panel finds that using the confusingly similar disputed domain name to operate such a site is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
Complainant argues that Respondent introduces only one additional letter into Complainant’s mark in order to capitalize on common typographical errors made when entering Complainant’s mark. Complainant contends that this action is typosquatting and is intended to capture Complainant’s customers who unknowingly make a mistake when searching for Complainant’s site. The Panel finds that this deliberate use of a typographical error to redirect Complainant’s customers to Respondent’s unaffiliated website constitutes typosquatting and demonstrates that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s registration and use of the disputed domain
name to link Internet users to websites featuring third-party links which are
in competition with the business of Complainant constitutes disruption of
Complainant’s business and evidences bad faith registration and use of the
contested domain name under Policy ¶ 4(b)(iii).
See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a domain name confusingly similar to a
competing mark in order to attract Internet users to a directory website
containing commercial links to the websites of a complainant’s competitors
represents bad faith registration and use of the domain under Policy ¶
4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii)
where a respondent used the disputed domain name to operate a commercial search
engine with links to a complainant’s commercial competitors).
Respondent misspells Complainant’s mark in the disputed domain name in order to capture Internet users who unknowingly make a typographical error when entering Complainant’s mark. Internet users entering the misspelled mark find themselves directed to Respondent’s webpage, which prominently features many links advertising Complainant’s services, as well as the services of third-party competitors. Many of the Internet users will subsequently click on one of these links in an effort to reach Complainant’s site as originally intended, and Respondent will consequently receive commercial gain from their actions as a result of “click-through” fees. Thus, the Panel finds that Respondent is using the disputed domain name to redirect Complainant’s customers to Respondent’s own site for profit, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain name. The Panel finds Respondent’s practice of typosquatting is evidence in and of itself of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstandley.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 1, 2010
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