Morgan Stanley v. Albert Jackson
Claim
Number: FA0403000244092
Complainant is Morgan Stanley (“Complainant”), represented
by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Albert Jackson (“Respondent”), P.O. Box 2014, George Town, Grand
Cayman, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <morganstanleydw.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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 (the "Forum")
electronically on March 8, 2004; the Forum received a hard copy of the
Complaint on March 10, 2004.
On
March 9, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <morganstanleydw.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.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
March 15, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 5, 2004 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@morganstanleydw.com by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
April 9, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <morganstanleydw.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY DEAN WITTER
mark.
2. Respondent does not have any rights or
legitimate interests in the <morganstanleydw.com> domain name.
3. Respondent registered and used the <morganstanleydw.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
The Morgan
Stanley Group, Inc. was founded in 1933 and has been an international leader in
investment banking and an innovator of financial services and products. Dean Witter, Discover & Co. (“Dean
Witter”) was founded in 1924 and has provided financial services and products
for individual investors. In 1997,
Morgan Stanley Group, Inc. merged with Dean Witter to form Morgan Stanley Dean
Witter & Co. In 2002, the company
changed its name to Morgan Stanley. One
of Morgan Stanley’s affiliates is Morgan Stanley DW, Inc., a retail
broker-dealer of securities. In light
of the foregoing, Complainant now owns the MORGAN STANLEY and DEAN WITTER
families of marks.
The MORGAN
STANLEY mark has been used by Complainant and it’s predecessors-in-interest
since at least as early as 1935.
Complainant registered the mark with the United States Patent and
Trademark Office (“USPTO”) on August 11, 1992 (Reg. No. 1,707,196). The mark is used in connection with
“investment banking services; financial services in the nature of underwriting,
distribution, and trading of securities; financial services in the nature of
merger, acquisition, restructuring, and other corporate finance activities;
stock brokerage and research services; investment management and advice; and
financial services in the nature of trading futures, options, foreign exchange,
and commodities, in class 36.”
The DEAN WITTER
mark has been used by Complainant and it’s predecessors-in-interest since at
least as early as 1924. Complainant
registered the mark with the USPTO on January 20, 1987 (Reg. No. 1,425,933). The mark is used in connection with
“financial services namely, providing stock brokerage services, investment
banking services, investment research services and advisory services in
connection therewith, in class 36.”
Complainant also
owns the MORGAN STANLEY DEAN WITTER mark, which has been used by Complainant
and it’s predecessors-in-interest since at least as early as 1998. Complainant registered the mark with the
USPTO on December 25, 2001 (Reg. No. 2,522,916). The mark is also used in connection with “financial services
namely, providing stock brokerage services, investment banking services,
investment research services and advisory services in connection therewith, in
class 36.”
Either directly
or through related companies, Complainant is the owner of the domain names
<morganstanley.com>, <deanwitter.com>, and
<morganstanleydeanwitter.com>.
Respondent
registered the disputed domain name <morganstanleydw.com> on July
23, 2003. Respondent uses the domain
name to operate a website that provides links to third-party websites that
offer financial services including: credit card services, brokerage services,
and legal services relating to securities and investment fraud.
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.
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.
Registration of
a mark with a governmental authority is sufficient to confer rights in a
complainant under Policy ¶ 4(a)(i). In
this case, Complainant has registered the marks MORGAN STANLEY, DEAN WITTER,
and MORGAN STANLEY DEAN WITTER with the USPTO.
Therefore, Complainant has established rights in the preceding marks
under Policy ¶ 4(a)(i). See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption); see also
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law.”).
The
incorporation of an abbreviated version of a third-party’s mark in a domain
name is sufficient to establish that a domain name is confusingly similar to
the third-party’s mark. Here, the
disputed domain name, <morganstanleydw.com>, incorporates
the first two words of Complainant’s MORGAN STANLEY DEAN WITTER mark in their
entirety. Respondent has merely
abbreviated the latter two words, “dean witter,” by appending “dw” to the
domain name. Thus, the Panel finds that
the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY
DEAN WITTER mark. See 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 Microsoft
Corp. v. Montrose Corp., D2000-1568
(WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be
confusingly similar even though the mark MICROSOFT is abbreviated); see also
Minn. State Lottery v. Mendes, FA
96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com>
domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY
registered mark).
Complainant has
established Policy ¶ 4(a)(i).
Respondent
has not responded to the Complaint and, therefore, the Panel finds that
Respondent lacks rights to and legitimate interests in the disputed domain
name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no legitimate interests in the domain names); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); 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 assertion in this regard.”).
Respondent has
registered a domain name, which is confusingly similar to Complainant’s MORGAN
STANLEY DEAN WITTER mark, to host a website that offers services that compete
with those offered by Complainant under its mark. Such use has consistently
been found not to be a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), nor is such use a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests in a domain
name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
Complainant has
asserted that Respondent is not commonly known by the disputed domain name <morganstanleydw.com>. Respondent has failed to rebut this
assertion. Therefore, the Panel finds
that Respondent is not commonly known by the domain name under Policy ¶
4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Furthermore,
Complainant has not authorized Respondent to use its MORGAN STANLEY DEAN WITTER
mark. See State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized
providing of information and services under a mark owned by a third party
cannot be said to be the bona fide offering of goods or services”); see also
Telstra Corp. v. Nuclear Marshmallow,
D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and
legitimate interests in the domain name because Respondent was not authorized
by Complainant to use its trademarks and the mark was distinct in its nature,
such that one would not legitimately choose it unless seeking to create an
impression of an association with Complainant); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent is
using a domain name, which is confusingly similar to Complainant’s MORGAN
STANLEY DEAN WITTER mark, to host a website that offers financial services that
compete with those offered by Complainant under its mark, presumably for
commercial gain. Internet users are
likely to be confused as to the relationship between the content hosted at
Respondent’s website and Complainant’s business because the services offered by
Complainant and the services marketed by Respondent are nearly identical. The fact that Respondent uses a domain name
confusingly similar to Complainant’s mark creates even more confusion and
evidences Respondent’s intention to cause confusion with Complainant’s mark as
to the source of the services offered at the domain name. As a result, Respondent registered and used
the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by intentionally
attempting to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with Complainant’ mark as to the source of
its website. 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 Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that
Respondent intentionally attempted to attract Internet users to his website for
commercial gain by creating a likelihood of confusion with Complainant’s mark
and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software
Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to
resolve to a website offering similar services as Complainant into the same
market).
Given the
long-standing use and fame of Complainant’s MORGAN STANLEY, DEAN WITTER, and
MORGAN STANLEY DEAN WITTER marks, it is likely that Respondent had knowledge of
Complainant’s rights in these marks prior to Respondent’s registration of the
disputed domain name. The fact that
these marks were registered with the USPTO provided constructive notice to
Respondent of Complainant’s rights in the marks.
See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding
that the fame of the YAHOO! mark negated any plausible explanation for
Respondent’s registration of the <yahooventures.com> domain name); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse.”).
Complainant has
established 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 <morganstanleydw.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 19, 2004
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