Morgan Stanley v. MORGAN STANLEY PRIVATE WEALTH MANAGEMENT
Claim Number: FA1310001527010
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is MORGAN STANLEY PRIVATE WEALTH MANAGEMENT (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley-wealthmanagement.com>, registered with Register.it S.p.A.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2013; the National Arbitration Forum received payment on October 29, 2013.
On October 30, 2013, Register.it S.p.A. confirmed by e-mail to the National Arbitration Forum that the <morganstanley-wealthmanagement.com> domain name is registered with Register.it S.p.A. and that Respondent is the current registrant of the name. Register.it S.p.A. has verified that Respondent is bound by the Register.it S.p.A. 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 October 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2013 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@morganstanley-wealthmanagement.com. Also on October 30, 2013, 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 November 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MORGAN STANLEY mark. Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <morganstanley-wealthmanagement.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant argues that it is the owner of the MORGAN STANLEY mark through registrations of the mark with various trademark authorities around the world, including the USPTO (e.g., Reg. No. 1,707,196 registered August 11, 1992) and the OHIM (e.g., Reg. No. 175,950 registered November 30, 1998). A complainant establishes its rights in a mark under Policy ¶ 4(a)(i) by registering the mark with numerous trademark authorities around the world, and that a complainant need not register its mark in the respondent’s country of origin in order to establish its rights in the mark. 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’)”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel holds that by submitting evidence of its registrations with the USPTO and the OHIM, Complainant has sufficiently established its rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <morganstanley-wealthmanagement.com> domain name is confusingly similar to its MORGAN STANLEY mark, because the domain name incorporates Complainant’s mark in its entirety while merely eliminating the space found between words in the mark, adding the generic top-level domain (“gTLD”) “.com,” and adding a hyphen and the phrase “wealth management.” A domain name’s elimination of the space found between words in a complainant’s mark and its addition of a gTLD such as “.com” do not create distinctiveness between the domain name and the mark pursuant to Policy ¶ 4(a)(i). 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)”). Moreover, a domain name’s use of punctuation such as a hyphen is irrelevant for the purposes of a confusing similarity analysis. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Finally, in Churchill Ins. Co. Ltd. v. Sutherland FA 1328073 (Nat. Arb. Forum July 13, 2010), the panel held that the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, because the domain name fully incorporated the complainant’s mark and added the descriptive phrase “lending group.” Similarly, here, the Panel holds that, as in Churchill Ins., the added phrase “wealth management” describes the wealth management services offered by Complainant under its MORGAN STANLEY mark. For the foregoing reasons, the Panel holds that the disputed <morganstanley-wealthmanagement.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that although the WHOIS information identifies the registrant of the disputed domain name as “Morgan Stanley Private Wealth Management,” Respondent is not commonly known as <morganstanley-wealthmanagement.com>. In Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004), the panel reasoned, “[i]n its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.” The Panel similarly determines that although the WHOIS information suggests that Respondent is commonly known as “Morgan Stanley Private Wealth Management,” there is no evidence in the record to suggest that Respondent was commonly known by this name before registering the disputed domain name. Accordingly, the Panel holds that Respondent is not commonly known as <morganstanley-wealthmanagement.com> pursuant to Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is not using the <morganstanley-wealthmanagement.com> domain name in connection with 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) because the domain name resolves to a parked website featuring hyperlinks to third parties, some of which are competitors of Complainant in the financial industry. The website resolving from <morganstanley-wealthmanagement.com> displays a variety of generic links, including links entitled “Financial Advisor Website,” “CFP Exam Certification,” “Investment Bank Bootcamp,” and “Buy Muni Bonds Online,” among others. Therefore, the Panel concludes that the disputed domain name promotes links to Complainant’s competitors in the financial industry. In Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008), the panel held that where the disputed domain name resolved to a website featuring various links, the respondent was resposnible for those links in the absence of evidence to the contrary. Therefore, the Panel holds that Respondent is responsible for the links associated with the disputed domain name. Furthermore, a respondent’s use of a domain name is not protected under ¶¶ Policy 4(c)(i) or 4(c)(iii) where the domain name resolves to a website that displays links to various third-party sites, some of which directly compete with the complainant. See, e.g., Skyhawke Techs., 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)”). For the foregoing reasons, the Panel concludes that Respondent’s use of the disputed domain name to display various hyperlinks, including links to Complainant’s competitors in the financial industry, 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has demonstrated bad faith registration and use of the <morganstanley-wealthmanagement.com> domain name under Policy ¶ 4(b)(iii) because the domain name diverts Internet users from Complainant to Respondent’s site, which in turn promotes links to competitors of Complainant. As noted above, the disputed domain name resolves to a site that promotes links entitled “Financial Advisor Website,” “CFP Exam Certification,” “Investment Bank Bootcamp,” and “Buy Muni Bonds Online,” among others. Therefore, the Panel determines that the disputed domain name is being used to promote links to Complainant’s competitors in the financial industry. A respondent engages in bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) where the disputed domain name is confusingly similar to the complainant’s mark and resolves to a website containing links to the complainant’s competitors. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Accordingly, the Panel determines that Respondent has demonstrated bad faith registration and use of the <morganstanley-wealthmanagement.com> domain name pursuant to Policy ¶ 4(b)(iii).
Where the disputed domain name resolves to a parked website operated by a domain parking company, the respondent is still responsible for the content associated with the disputed domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). Furthermore, a respondent demonstrates bad faith under Policy ¶ 4(b)(iv) where the domain name resolves to a parked website even though the respondent denies it is receiving click-through fees. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked’ . . . for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees . . .”). Accordingly, the Panel holds Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent registered the disputed domain name with actual notice of Complainant and Complainant’s rights in the MORGAN STANLEY mark. A respondent demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii) when it registers the disputed domain name with actual notice of the complainant and its rights in the at-issue mark. 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). Complainant argues that in this case, Respondent’s actual notice of its MORGAN STANLEY can be inferred given the notoriety of the mark. A respondent has actual notice of the complainant and its mark where the complainant’s mark is extremely well-known. See, e.g., Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it). Thus, the Panel concludes that Respondent had actual notice of Complainant’s MORGAN STANLEY mark. The Panel’s conclusion is further supported by the fact that the domain name incorporates the descriptive phrase “wealth management,” precisely services which Complainant offers.
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 <morganstanley-wealthmanagement.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 4, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page