ELIGIBILITY REQUIREMENTS DISPUTE
RESOLUTION POLICY
DECISION
Morgan Stanley
v. Bailey Bross a/k/a Bailey & Bross Inc.
Claim Number: FA0407000304684
PARTIES
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 Bailey
Bross a/k/a Bailey & Bross Inc. (“Respondent”), Ringelnatzstr.
6, Dietzenbach, Germany 63128.
REGISTRAR AND
DISPUTED REGISTERED NAME
The
Registered Name at issue is <morganstanley.name>, registered with Schlund
+ Partner AG.
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.
Louis
E. Condon as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on July 26, 2004; the Forum received a hard copy of the
Complaint on July 28, 2004.
On
July 29, 2004, Schlund + Partner AG confirmed by e-mail to the Forum that the
Registered Name <morganstanley.name> is registered with Schlund +
Partner AG and that Respondent is the current registrant of the Registered
Name. Schlund + Partner AG has verified
that Respondent is bound by the Schlund + Partner AG registration agreement and
has thereby agreed to resolve registered name disputes brought by third parties
in accordance with the Eligibility Requirements Dispute Resolution Policy
(“ERDRP”).
On
August 9, 2004 a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 30,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for
the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”)
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 9, 2004, pursuant to ERDRP Rule 6(b), the Forum appointed Louis E.
Condon as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibilities under Paragraph 2(a)
of the ERDRP Rules. Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ERDRP, ERDRP Rules, the Forum’s ERDRP 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 Panel issue a Defensive Registration for the contested domain
name.
A. Complainant
Complainant
asserts that Respondent registered <morganstanley.name> in
violation of the Eligibility Requirements for the following reasons:
1. Respondent’s legal name is not
“Morgan Stanley.”
2. Respondent
owns no trademark or service mark rights to the name “Morgan Stanley.”
3.
Respondent is not
commonly known by the name “Morgan Stanley.”
Complainant
asserts that the domain name <morganstanley.name> is identical to
the textual or word elements of Complainant’s MORGAN STANLEY mark and therefore
has established rights in the Registered Name <morganstanley.name>.
B. Respondent
No
Response was received.
Complainant
owns numerous registrations for its MORGAN STANLEY mark with various worldwide
governmental authorities. For example, Complainant
owns registration number 1,707,196 with the United States Patent and Trademark
Office, which was registered on Aug.11, 1992, in connection with “investment
banking,” among other services.
Respondent
registered the domain name <morganstanley.name> on June 6, 2004
and is now using the disputed domain name to advertise financial advisory
services.
Paragraph
15(a) of the ERDRP 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 ERDRP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the ERDRP Rules.
Paragraph
4(b) of the ERDRP requires that Complainant prove each of the following
elements in order to establish that the Registered Name was registered in
violation of the Eligibility Requirements and obtain an order that a Registered
Name should be cancelled:
(1) the name corresponding to the Registered
Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered
Name is not the name of a fictional character in which the Respondent has
trademark or service mark rights; and
(3) the Respondent has not been commonly
known by the name corresponding with the Registered Name.
The
evidence in the record fails to demonstrate that Respondent’s legal name is
“Morgan Stanley.” The available
evidence that bears directly upon Respondent’s legal name is the WHOIS
registration information, which lists Respondent’s name as Bailey Bross. Expressio unius est exclusio alterius. Therefore, the Panel finds that “Morgan
Stanley” is not the legal name of Respondent and Complainant has established paragraph 4(b)(i) of the ERDRP.
Name of Fictional Character
No
evidence on record suggests, and Respondent has not come forward with any
evidence that establishes, that Respondent owns any trademark or service mark
rights for a character by the name of “Morgan Stanley.” The record contains evidence that a search
was conducted of the Trademark Offices of Germany, the European Union, the
United States and the International Register, which did not reveal any
registrations or applications of the MORGAN STANLEY mark on behalf of
Respondent. Therefore, Complainant has
established paragraph 4(b)(ii) of the ERDRP.
Commonly Known As
As previously stated, there is no evidence in the record to suggest that Respondent is commonly known as or by “Morgan Stanley” and Respondent has produced no such evidence to establish the same. Therefore, Complainant has established paragraph 4(b)(iii) of the ERDRP.
As one Panel has
stated:
According
to Paragraph 2(b) of the Eligibility Requirements for Phase I Defensive
Registrations of the .NAME Restrictions, the name must correspond to a valid
and enforceable trademark or services (sic) mark registration having national
effect that issued prior to April 16, 2001, in which the Complainant
has rights. See Bayerische
Motorenwerke AG. v. Dariusz Herman, DNAME 2004-00001 (WIPO
Mar. 29, 2004).
In
effect, Complainant must prove that the name is identical to the textual or
word elements of Complainant’s trademark or service mark. Complainant has
provided the Panel with evidence of its registrations of its MORGAN STANLEY
mark in the United States, Germany, and the European Union that were issued
prior to April 16, 2001. The MORGAN
STANLEY mark is identical to the disputed domain name and thus, Complainant
satisfies the requirements of paragraph 5(f)(i)(C) of the ERDRP.
Complainant having established, as
required by the ERDRP Policy, that <morganstanley.name> was
registered in violation of the Eligibility Requirements; and furthermore, Complainant having established
ERDRP Policy Eligibility Requirements for the issuance of a Defensive
Registration for the contested domain name, the Panel concludes that the
requested relief should be granted.
Accordingly, it is hereby ordered that a
defensive registration in the Registered Name is granted to the Complainant in
accordance with ERDRP 5(f)(i)(C).
Louis E. Condon, Panelist
Dated: September 23, 2004