national arbitration forum

 

DECISION

 

Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. suhminho and morganstanley-smithbarney morganstanley

Claim Number: FA0908001281789

 

PARTIES

Complainant is Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is suhminho and morganstanley-smithbarney morganstanley (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com>, registered with Yesnic Co. Ltd.  Also at issue is the <morganstanley-smithbarney.org> domain name registered with Dotname Korea Corp.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2009.

 

On August 27, 2009, Yesnic Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names are registered with Yesnic Co. Ltd. and that Respondent is the current registrant of the names.  Yesnic Co. Ltd. has verified that Respondent is bound by the Yesnic Co. Ltd. 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 August 27, 2009, Dotname Korea Corp confirmed by e-mail to the National Arbitration Forum that the <morganstanley-smithbarney.org> domain name is registered with Dotname Korea Corp and that Respondent is the current registrant of the name.  Dotname Korea Corp has verified that Respondent is bound by the Dotname Korea Corp 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 September 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 2009 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@morganstanley-smithbarney.com, postmaster@morganstanley-smithbarney.net, postmaster@morganstanley-smithbarney.org, postmaster@smithbarney-morganstanley.com, and postmaster@smithbarneymorganstanley.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY and SMITH BARNEY marks.

 

2.      Respondent does not have any rights or legitimate interests in the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names.

 

3.      Respondent registered and used the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC, holds several registrations of the MORGAN STANLEY (See, e.g., Reg. No. 1,707,196 issued Aug. 11, 1992) and SMITH BARNEY (See, e.g., Reg. No. 1,986,596 issued July 16, 1994) marks with the United States Patent and Trademark Office (“USPTO”) for use in connection with financial and investment services.  On January 13, 2009, Complainant officially announced that it would be starting a joint venture called “Morgan Stanley Smith Barney.”  News of the joint venture leaked and was published by CNBC on January 9, 2009.

 

Respondent registered the <morganstanley-smithbarney.org> domain name on January 11, 2009 and the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names on January 12, 2009.  None of the disputed domain names resolve to an active website.

 

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."

 

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.”).

 

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.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue is effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” 

 

Complainant contends that for all five disputed domain names the e-mail addresses and postal addresses are the same. The Panel finds these similarities sufficiently establish that the disputed domain names are controlled by the same person and/or entity and the Panel chooses to proceed with an analysis of the instant proceeding pursuant to the Policy.  See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical."); see also Am. Online, Inc. v. Johuathan Invs., Inc. & AOLLNEWS.COM, D2001-0918 (WIPO Sept. 14, 2001) (determining that when service is proper and the respondent(s) fail to respond to the complaint, the panel may accept the complainant’s assertion that the various aliases are the same person or entity as true).

 

Identical and/or Confusingly Similar

 

The Panel finds that registration of the MORGAN STANLEY (Reg. No. 1,707,196 issued Aug. 11, 1992) and SMITH BARNEY (Reg. No. 1,986,596 issued July 16, 1994) marks with the USPTO establishes Complainant’s rights in the marks under Policy ¶ 4(a)(i).  See Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence)

 

The <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names combine Complainant’s MORGAN STANLEY and SMITH BARNEY marks and a generic top-level domain (“gTLD”).  The <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, and <smithbarney-morganstanley.com> domain names also add a hyphen between Complainant’s two marks.  The Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i) because hyphens and gTLDs are irrevelant in distinguishing disputed domain names.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).

 

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

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the MORGAN STANLEY and SMITH BARNEY marks, and the WHOIS information identifies Respondent as “suhminho and morganstanley-smithbarney morganstanley.”  Thus, the Panel finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii).  See 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); see City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).

 

Respondent has held, but not used, the disputed domain names for nine months.  The Panel finds that this failure to make any active use of the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names is not 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).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).

 

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

 

Registration and Use in Bad Faith

 

The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that such an analysis is not limited to the enumerated factors in Policy ¶ 4(b).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Since registration of the disputed domain names on January 11 and 12, 2009, Respondent has failed to make an active use of any of the disputed domain names.  The Panel finds that Respondent’s failure to make an active use of the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names for nine months is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

On January 9, 2009, CNBC ran a story that Complainant would be starting a venture to be called “Morgan Stanley Smith Barney” as a result of a merger of investment firms.  On January 11 and 12, 2009, Respondent registered the disputed domain names.  The Panel finds that the timing of registration of the <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”).

 

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 <morganstanley-smithbarney.com>, <morganstanley-smithbarney.net>, <morganstanley-smithbarney.org>, <smithbarney-morganstanley.com>, and <smithbarneymorganstanley.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  October 21, 2009

 

 

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