Morgan Stanley v. Stanley Morgan
Claim Number: FA0510000585915
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. Respondent is Stanley Morgan (“Respondent”), 104 West 71st Street, Apt. 4B, New York, NY 10036.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mymorganstanley.com>, registered with Network Solutions, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2005.
On October 27, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mymorganstanley.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 October 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2005 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@mymorganstanley.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Complainant is a leading international investment banking and financial services firm.
Complainant, founded in 1935, offers a full range of financial and investment services to its clients under the famous MORGAN STANLEY mark.
Complainant owns the MORGAN STANLEY family of marks through registration with the United States Patent and Trademark Office dating from 1992.
Respondent registered the <mymorganstanley.com> domain name December 10, 1999.
By virtue of the registration and worldwide fame of Complainant’s mark, Respondent either actually or constructively knew of the existence of the mark when it registered the subject domain name.
Respondent is using the disputed domain name to redirect Internet users to a search engine website where numerous links for various services, including financial services similar to those offered by Complainant, are displayed.
Respondent’s <mymorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
Respondent does not have any rights or legitimate interests in the <mymorganstanley.com> domain name.
Respondent registered and is using the <mymorganstanley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) The domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights;
(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 by Respondent 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."
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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MORGAN STANLEY mark through registration of the mark with the USPTO and through continuous use of the mark in commerce. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
Respondent’s <mymorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because Respondent’s domain name incorporates Complainant’s entire mark with the sole addition of the generic or descriptive word “my.” The Panel finds that Respondent’s <mymorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i) inasmuch as the mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of a disputed domain name. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000).
Moreover, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain name to Complainant’s MORGAN STANLEY mark, pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant alleges that Respondent does not have rights or
legitimate interests in the <mymorganstanley.com> domain
name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have right or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel concludes that Respondent does not have
rights or legitimate interests in the <mymorganstanley.com> domain
name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000); see also Bank
of Am. Corp. v. McCall, FA 135012
(Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.”).
In addition,” Complainant
asserts, and there is nothing in the record before the Panel to contradict,
that Respondent is not commonly known by the <mymorganstanley.com> domain
name. This is further evidence that
Respondent has not established rights or legitimate interests in the <mymorganstanley.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004); see also Nature’s Path Foods Inc. v.
Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004).
Moreover, Complainant alleges, and Respondent does not deny,
that Respondent’s <mymorganstanley.com> domain name resolves to a
website that contains links to websites offering financial planning and credit
card services similar to those offered by Complainant. The Panel therefore finds Respondent’s use
of a domain name that is confusingly similar to Complainant’s mark to redirect
Internet users interested in Complainant’s services to a website that offers
similar services in competition with Complainant’s business is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <mymorganstanley.com> domain name, which is confusingly similar to Complainant’s MORGAN STANLEY mark, to redirect Internet users to a search engine website featuring services that compete with Complainant’s business. The Panel finds that such use constitutes evidences bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000).
Additionally, the Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000).
Finally under this head, Complainant contends, and
Respondent does not dispute, that Respondent registered the contested domain
name with actual or constructive knowledge of Complainant’s rights in the
MORGAN STANLEY mark by virtue of Complainant’s prior registration of that mark
with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such
actual or constructive knowledge evidences bad faith registration and use of
the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements of proof required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby,
GRANTED.
Accordingly, it is Ordered that the <mymorganstanley.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 6, 2005
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