Morgan Stanley v. Denve Dallas
Claim Number: FA1008001342149
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Denve Dallas (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyae.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2010.
On August 25, 2010, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <morganstanleyae.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2010 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@morganstanleyae.com by e-mail. Also on August 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 September 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 a Written Notice, as defined in Rule 1. 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 <morganstanleyae.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyae.com> domain name.
3. Respondent registered and used the <morganstanleyae.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services to a range of clients in 37 countries, including the United States. Complainant owns multiple trademark registrations for the MORGAN STANLEY mark with trademark offices around the world, including the United States Patent and Trademark Office (“USPTO”), the Japan Patent Office (“JPO”), and the Chinese State Intellectual Property Office (“SIPO”):
USPTO
MORGAN STANLEY Reg. No. 1,707,196 issued August 11, 1992;
MORGAN STANLEY VISION Reg. No. 2,852,094 issued June 8. 2004;
MORGAN STANLEY ACCESS Reg. No. 2,872,848 issued August 10, 2004;
JPO
MORGAN STANLEY Reg. No. 4,630,876 issued December 29, 2002;
MORGAN STANLEY Reg. No. 4,630,877 issued December 29, 2002; &
SIPO
MORGAN STANLEY Reg. No. 607,509 issued August 20, 2002.
Respondent, Denve Dallas, registered the <morganstanleyae.com> domain name on August 11, 2010. The disputed domain name resolves to a website that attempts to pass itself off as Complainant and contains pay-per-click links to third parties offering financial services in competition with Complainant.
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.
Complainant owns multiple trademark registrations for the MORGAN STANLEY mark with trademark offices around the world, including the USPTO, the JPO, and the Chinese SIPO:
USPTO
MORGAN STANLEY Reg. No. 1,707,196 issued August 11, 1992;
MORGAN STANLEY VISION Reg. No. 2,852,094 issued June 8. 2004;
MORGAN STANLEY ACCESS Reg. No. 2,872,848 issued August 10, 2004;
JPO
MORGAN STANLEY Reg. No. 4,630,876 issued December 29, 2002;
MORGAN STANLEY Reg. No. 4,630,877 issued December 29, 2002; &
SIPO
MORGAN STANLEY Reg. No. 607,509 issued August 20, 2002.
The Panel finds that a trademark registration with a trademark authority conclusively proves Complainant’s rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that Respondent’s <morganstanleyae.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because the only changes the disputed domain name makes to Complainant’s mark are the addition of the letters “ae”—likely an abbreviation for “active extension,” a type of investment fund—and the affixation of the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding letters or a descriptive abbreviation to Complainant’s mark fails to prevent a finding of confusing similarity according to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). The Panel also finds that the inclusion of the gTLD “.com” in the disputed domain name has no bearing on a Policy ¶ 4(a)(i) analysis because gTLDs are required in domain names. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s <morganstanleyae.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to the requirements of Policy ¶ 4(a)(i), Complainant has the burden of presenting a prima facie case against Respondent in these proceedings. After such a prima facie case has been established, Respondent must bear the burden of proving its rights and legitimate interests in the disputed domain name. After Complainant established a sufficient prima facie case, however, Respondent failed to respond. Respondent’s silence allows the Panel to make the inferences that Complainant’s allegations are true and Respondent accordingly lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant alleges that neither the MORGAN STANLEY mark nor the <morganstanleyae.com> domain name is part of Respondent’s name. Complainant also argues that Respondent does not engage in business under either of those names, is not a licensee of Complainant, and is not otherwise authorized to use Complainant’s mark. The WHOIS information for the <morganstanleyae.com> domain name lists the registrant as “Denve Dallas,” which the Panel finds is evidence supporting that Respondent is not commonly known by the disputed domain name. The Panel accordingly finds that Respondent does not possess rights and legitimate interests in the disputed domain name pursuant to 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) ford not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name).
Complainant asserts that on the website resolving from the <morganstanleyae.com> domain name, Respondent displays pay-per-links to third parties offering financial services in competition with Complainant. Complainant argues that using the disputed domain name to display these competing links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that the presence of competing pay-per-click links indicates that Respondent’s use of the disputed domain name does not comply with the requirements of Policy ¶¶ 4(c)(i) or 4(c)(iii), indicating that Respondent’s lack of rights and legitimate interests in the disputed domain name. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l, Inc. v. Abend, FA970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant also contends that Respondent is attempting to pass itself as Complainant at the <morganstanleyae.com> domain name because the majority of the content on the website discusses Complainant from a first person perspective. Additionally, Complainant asserts that Respondent makes frequent use of the MORGAN STANLEY mark on multiple pages, lists a copyright notice indicating Complainant as the author of the website, shows a map of Complainant’s offices worldwide, and plagiarizes content from Complainant’s official website. Complainant alleges that Respondent designed the website in this way in order to falsely create the impression that Respondent’s website is sponsored by, maintained by, or affiliated with Complainant. The Panel finds that efforts to pass itself off as Complainant and create the false impression of affiliation demonstrate that Respondent lacks rights and legitimate interests in the <morganstanleyae.com> domain name according to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s <morganstanleyae.com> domain name contains pay-per-click hyperlinks to competing third-party providers of financial services. Complainant argues that this facilitation of competition with Complainant is disruptive to Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to competitors of Complainant reveals bad faith registration according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent receives a financial benefit in the form of click-through fees when Internet users arrive at the <morganstanleyae.com> domain name and mistakenly believe it to be associated with Complainant. Complainant argues that Respondent intentionally appropriates Complainant’s well-known mark in the disputed domain name in order to attract these confused Internet users for Respondent’s own profit. The Panel finds these activities indicate Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant alleges that the content and frequent use of Complainant’s mark at the <morganstanleyae.com> domain name are intended to create the impression and cause Internet users to believe that the website is affiliated with or maintained by Complainant. Complainant argues, and the Panel agrees, that such false association and passing off is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyae.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 5, 2010
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