Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. Janice Liburd
Claim Number: FA1010001355493
Complainant is Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC (“Complainant”), represented by Eric J. Shimanoff, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Janice Liburd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanelysmithbarney.com>, registered with Moniker.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2010.
On October 29, 2010, Moniker.com confirmed by e-mail to the National Arbitration Forum that the <morganstanelysmithbarney.com> domain name is registered with Moniker.com and that Respondent is the current registrant of the name. Moniker.com has verified that Respondent is bound by the Moniker.com 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 November 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@morganstanelysmithbarney.com by e-mail. Also on November 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of a Written Notice, as defined in Rule 1. 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 <morganstanelysmithbarney.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 <morganstanelysmithbarney.com> domain name.
3. Respondent registered and used the <morganstanelysmithbarney.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, created a joint venture with third-party Citigroup, Inc., called “Morgan Stanley Smith Barney Holdings LLC.” Based on this evidence, the Panel will refer to both Complainants as a single Complainant in the case. Complainant owns the exclusive rights to the MORGAN STANLEY and SMITH BARNEY marks. Complainant uses its marks in connection with its wealth management, financial planning and investment services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MORGAN STANLEY (e.g., Reg. No. 1,707,196 issued August 11, 1992) and SMITH BARNEY (e.g., Reg. No. 1,986,596 issued July 16, 1996) marks.
Respondent registered the <morganstanelysmithbarney.com> domain name on October 15, 2010. The disputed domain resolves to a parked website featuring third-party links which compete with Complainant’s business.
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 asserts that it has established rights in the MORGAN STANLEY (e.g., Reg. No. 1,707,196 issued August 11, 1992) and SMITH BARNEY (e.g., Reg. No. 1,986,596 issued July 16, 1996) marks through its multiple trademark registrations with the USPTO Previous panels have found that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark, irrespective of respondent’s country of operation or registration. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). In light of this, the Panel finds that Complainant has established rights in the MORGAN STANLEY and SMITH BARNEY marks pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <morganstanelysmithbarney.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and SMITH BARNEY marks. The disputed domain name contains both of Complainant’s marks, removes the spaces seprating the terms of the marks, misspells STANLEY by transposing the letters ‘l’ and ‘e,’ and adds the generic top-level domain (“gTLD”) “.com.” Earlier panels have asserted that by transposing two letters in a famous mark and adding a gTLD, a disputed domain name is rendered confusingly similar to a complainant’s mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s <morganstanelysmithbarney.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and SMITH BARNEY marks pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Previous panels have supported the presumption that when a complainant makes a prima facie case in support of its allegations, then the burden of proof shifts to the respondent to show that they have rights or legitimate interests in their disputed domain name under Policy ¶ 4(a)(ii). Complainant alleges that Respondent lacks rights and legitimate interests in the <morganstanelysmithbarney.com> domain name. The Panel finds that Complainant has made a prima facie case. Because Respondent failed to respond to the Complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the disputed domain name. 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 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.”). Nonetheless, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that because of the longstanding goodwill and prominent nature of their famous marks, Respondent could not purport to have rights or legitimate interests in the disputed domain name. Complainant has never authorized Respondent to use either the MORGAN STANLEY or SMITH BARNEY mark. Furthermore, the WHOIS information identifies the domain name registrant as “Janice Liburd.” Therefore, the Panel may find that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Respondent uses the <morganstanelysmithbarney.com> domain name to direct Internet users to a parked website featuring third-party, commercial links which compete with Complainant’s business. Respondent likely profits from the use of such links. The Panel may find that this 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges Respondent’s use of the <morganstanelysmithbarney.com> domain name is a part of a pattern of bad faith use and registration. Respondent has been a respondent in multiple UDRP proceedings that resulted in a transference of domain names from Respondent to the complainant in those cases. See ER Marks, Inc and QVC, Inc. v. Janice Liburd – NA, FA 1341427 (Nat. Arb. Forum Sept. 29, 2010); see also Goodwill Community Foundation, Inc. v. Janice Liburd - NA, FA 1345575 (Nat. Arb. Forum Oct. 27, 2010). The Panel asserts that this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks).
Complainant contends that Respondent is attempting to disrupt its business by diverting Internet users to sites of Complainant’s competitors. The Panel finds such disruption to constitute bad faith registration and use 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 confusingly similar domain name 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 under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses a domain name which is confusingly similar to Complainant’s marks in an attempt to attract Internet users seeking Complainant’s official sites. When Internet users arrive at Respondent’s <morganstanelysmithbarney.com> domain, they are presented with third-party links which compete with Complainant’s business. Respondent likely receives a commercial gain when confused Internet users click-through the links displayed on the disputed domain name. The Panel finds Respondent’s attempt to profit from this creation of confusion is in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds Policy ¶ 4(a)(iii) is 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 <morganstanelysmithbarney.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 11, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum