Morgan Stanley v. Above.com Domain Privacy
Claim Number: FA1103001380941
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morgnstanleyclientserv.com>, registered with Above.com.
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 March 29, 2011; the National Arbitration Forum received payment on March 29, 2011.
On March 30, 2011, Above.com confirmed by e-mail to the National Arbitration Forum that the <morgnstanleyclientserv.com> domain name is registered with Above.com and that Respondent is the current registrant of the name. Above.com has verified that Respondent is bound by the Above.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2011 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@morgnstanleyclientserv.com. Also on March 30, 2011, 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 April 20, 2011, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <morgnstanleyclientserv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morgnstanleyclientserv.com> domain name.
3. Respondent registered and used the <morgnstanleyclientserv.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 through a combination of institutional and retail capabilities. Complainant owns multiple MORGAN STANLEY and related marks with the United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Date Issued
MORGAN STANLEY 1,707,196 August 11, 1992;
CLIENTSERV 2,322,252 February 22, 2000;
MORGAN STANLEY CLIENT LINK 2,759,476 September 2, 2003;
MORGAN STANLEY VISION 2,852,094 June 8, 2004;
MORGAN STANLEY ACCESS 2,872,848 August 10, 2004;
MORGAN STANLEY CLIENTONE 2,968,441 July 12, 2005; and
MORGAN STANLEY CLIENTONE 3,096,321 May 23, 2006.
Respondent registered the <morgnstanleyclientserv.com> domain name on March 7, 2011. The disputed domain name resolves to a website hosting a pay-per-click links directory that advertises third-party businesses 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 MORGAN STANLEY and related marks with the USPTO:
Mark Reg. No. Date Issued
MORGAN STANLEY 1,707,196 August 11, 1992;
CLIENTSERV 2,322,252 February 22, 2000;
MORGAN STANLEY CLIENT LINK 2,759,476 September 2, 2003;
MORGAN STANLEY VISION 2,852,094 June 8, 2004;
MORGAN STANLEY ACCESS 2,872,848 August 10, 2004;
MORGAN STANLEY CLIENTONE 2,968,441 July 12, 2005; and
MORGAN STANLEY CLIENTONE 3,096,321 May 23, 2006.
The Panel finds that Complainant has established rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or conducts business operations in a foreign country. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <morgnstanleyclientserv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because the disputed domain name combines a misspelled version of the MORGAN STANLEY mark—one that omits the space between terms and deletes the letter “a” in “Morgan”—combined with another of Complainant’s marks, CLIENTSERV, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining two of Complainant’s marks does not create a distinct domain name that avoids confusing similarity. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”). The Panel also holds that deleting a letter in Complainant’s mark does not alleviate confusing similarity. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel determines that neither removing the space between the terms nor adding the gTLD has any effect on differentiating the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel accordingly concludes that Respondent’s <morgnstanleyclientserv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds the elements of Policy ¶ 4(a)(i) have been met.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.”); see also 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.”).
Complainant contends that the <morgnstanleyclientserv.com> domain name is not part of Respondent’s personal name and that Respondent does not engage in any business or commerce under that name. Complainant asserts that Respondent is not a licensee of Complainant and has never been authorized to use Complainant’s MORGAN STANLEY mark. Complainant denies having any relationship whatsoever with Respondent. The WHOIS information for the <morgnstanleyclientserv.com> domain name lists the registrant as “Above.com Domain Privacy,” which does not reflect any association with the disputed domain name. The Panel therefore concludes that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests 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) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent’s <morgnstanleyclientserv.com> domain name resolves to a parked website which contains pay-per-click links to third-party businesses offering financial services that compete with Complainant’s services. Complainant asserts that such parking and linking to competitors’ websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). The Panel agrees with Complainant. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s 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 non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 the elements of Policy ¶ 4(a)(ii) have been met.
Complainant contends that Respondent’s <morgnstanleyclientserv.com> domain name resolves to a website containing pay-per-click links to third-party businesses in competition with Complainant by also providing financial services. This web directory of competitors disrupts Complainant’s business because Internet users seeking Complainant’s products will be diverted to websites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors show bad faith registration and use under 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 name 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 argues that Respondent intentionally registered the <morgnstanleyclientserv.com> domain name containing two of Complainant’s well-known marks to capitalize on the fame and goodwill enjoyed by Complainant and attract Complainant’s intending customers to the resolving website. Complainant argues that the presence of Complainant’s marks and the fact that the advertised links relate to services offered by Complainant create a likelihood of confusion as to the source, affiliation or sponsorship of the website. Because the links featuring on the resolving website are presumably pay-per-click links that generate revenue for Respondent when clicked, Complainant argues that Respondent registered and uses the disputed domain name to profit by misleadingly attracting consumers. The Panel finds these actions demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).”).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morgnstanleyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 3, 2011
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