national arbitration forum

 

DECISION

 

Morgan Stanley v. Morgan Stanley

Claim Number: FA1212001474105

PARTIES

Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Morgan Stanley (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <morganstanleyfr.com>, registered with Domain.com, LLC.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2012; the National Arbitration Forum received payment on December 4, 2012.

 

On December 4, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <morganstanleyfr.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name.  Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2012 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@morganstanleyfr.com.  Also on December 6, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2.  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <morganstanleyfr.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <morganstanleyfr.com> domain name.

 

3.    Respondent registered and used the <morganstanleyfr.com> domain name in bad faith.

 

B.  Respondent failed to submit a timely Response in this proceeding.

 

FINDINGS

Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (e.g., Reg. No. 1,707,196, registered August 11, 1992), and with the European Union Office for Harmonization in the Internal Market (“OHIM”) for the MORGAN STANLEY mark (Reg. No. 000175950, registered November 30, 1998).  Complainant uses the mark to offer financial and investment services, and is the owner of the domain names <morganstanley.com> and <morganstanley.net>.

 

Respondent registered the <morganstanleyfr.com> domain name on November 26, 2012, and it resolves to a parking website, which contains links to third-party businesses offering financial services that compete with Complainant’s services.

 

DISCUSSION

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registrations of the MORGAN STANLEY mark with the USPTO and OHIM are sufficient to establish rights in the mark under Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).

 

Respondent’s <morganstanleyfr.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it features Complainant’s mark in its entirety and merely adds the geographically descriptive term “fr,” which is the abbreviation for France.  The addition of a geographic term does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).  The addition of a gTLD and the removal of spaces also do not distinguish Respondent’s domain name from Complainant’s mark.  See 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).”).  Therefore, the Panel finds that Respondent’s <morganstanleyfr.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the disputed domain name and does not actually engage in any business or commerce under the name MORGAN STANLEY or <morganstanleyfr.com>.  The WHOIS database indicates that Respondent is called “Morgan Stanley” and lists the address of Complainant’s worldwide headquarters in New York, New York.  Complainant asserts that Respondent has falsely listed itself as Morgan Stanley, and states that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use Complainant’s marks.  Although Respondent appears to be commonly known by the disputed domain name, Respondent has not provided evidence showing that it is actually known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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”).

 

Complainant asserts that Respondent’s disputed domain name resolves to a parking website, which contains links to third-party businesses offering financial services that compete with Complainant’s services, for which Respondent presumably receives click-through fees.  The Panel notes that Respondent’s disputed domain name connects to a website which features links titled “Bad Credit Finance,” “Easy Personal Loans,” “Poor Credit Loans,” and other competing links.  Therefore, the Panel finds that Respondent uses the disputed domain name to provide links that directly compete with Complainant, which is not a bona fide offering or goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s domain name resolves to a website that provides links to commercial websites that offer competing services to Complainant’s services, for which Respondent presumably receives a financial benefit in the form of click-through fees.  This use disrupts Complainant’s business, showing bad faith registration and use under Policy ¶ 4(b)(iii).  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

Respondent is using the disputed domain name to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with those sites, which demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). 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.’”).

 

Complainant asserts that Complainant’s marks are well known and registered in many countries throughout the world and, therefore, Respondent had constructive knowledge of Complainant’s marks at the time that it registered the confusingly similar domain name.  The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <morganstanleyfr.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  January 11, 2013

 

 

 

 

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