Morgan Stanley v. Fernando Teles d/b/a quakeclub
Claim Number: FA0512000611787
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 Fernando Teles d/b/a quakeclub (“Respondent”), Rua Lameiros, 12, Sande-GMR, PT 4805-619.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanleyoncall.info>, registered with Enom, Inc.
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 December 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2005.
On December 19, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <morganstanleyoncall.info> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 21, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2006 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@morganstanleyoncall.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2006, 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." 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 <morganstanleyoncall.info> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyoncall.info> domain name.
3. Respondent registered and used the <morganstanleyoncall.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, has been an international leader in investment banking and an innovator in financial services and products since its founding in 1935. Complainant registered the MORGAN STANLEY mark with the U.S. Patent and Trademark Office (“USPTO”) on August 11, 1992 (Reg. No.1,707,196).
Respondent, Fernando Teles d/b/a quakeclub, registered the disputed domain name on November 9, 2005. The website associated with the <morganstanleyoncall.info> domain name offers penis enlargement pills for sale.
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. 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 its trademark registration to
demonstrate rights in the STANLEY MORGAN mark.
The Panel accepts Complainant’s submissions as evidence of Complainant’s
rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
The Panel finds that the <morganstanleyoncall.info>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because
the only difference is the addition of the words “on call,” which does not
significantly distinguish the domain name from the mark. See Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates
the VIAGRA mark in its entirety, and deviates only by the addition of the word
“bomb,” the domain name is rendered confusingly similar to the complainant’s
mark); Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr.
23, 2001) (finding the <broadcomonline.com> domain name is confusingly
similar to the complainant’s BROADCOM mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s MORGAN STANLEY
mark to offer penis enlargement pills for sale. The Panel finds that appropriating another’s mark to sell
unrelated, penis enlargement products is neither a bona fide offering of
a good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”); Wells Fargo & Co. v. Nadim, FA 127720
(Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the
complainant’s WELLS FARGO mark to redirect Internet users to a domain name
featuring magazine subscriptions was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to sell penis
enlargement pills. The Panel finds that
appropriating Complainant’s mark in a confusingly similar domain name to sell
unrelated goods is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Household Int’l, Inc. v. Cyntom Enter.,
FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (use of a well-known business name for
an unrelated purpose may support an inference of a bad-faith attempt); Bank of Am. Corp. v. Out Island Props.,
Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the
disputed domain names contain entire versions of Complainant’s marks and are
used for something completely unrelated to their descriptive quality, a
consumer searching for Complainant would become confused as to Complainant’s
affiliation with the resulting search engine website” in holding that the
domain names were registered and used in bad faith pursuant to Policy ¶
4(b)(iv)).
The Panel finds that 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 <morganstanleyoncall.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 24, 2006
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