Morgan Stanley v. Unasi Inc.
Claim
Number: FA0508000529514
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 Unasi Inc. (“Respondent”), Galerias Alvear 3, Zona 5, Panama 5235,
Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <morganstanlet.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically August
2, 2005; the National Arbitration Forum received a hard copy of the Complaint August
4, 2005.
On
August 3, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the <morganstanlet.com>
domain name is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and
that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com
verified that Respondent is bound by the Iholdings.com, Inc. d/b/a
Dotregistrar.com registration agreement and thereby has 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 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 25, 2005, 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@morganstanlet.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 1, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <morganstanlet.com>, is confusingly similar to
Complainant’s MORGAN STANLEY mark.
2. Respondent has no rights to or legitimate
interests in the <morganstanlet.com> domain name.
3. Respondent registered and used the <morganstanlet.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Morgan Stanley, is in the investment banking
business and provides financial services and products. Since its founding in 1933, Complainant has
become an international leader in investment banking.
Complainant is the owner of numerous trademark registrations with the
United States Patent and Trademark Office (“USPTO”) that incorporate the MORGAN
STANLEY mark (Reg. No. 1,707,196 issued August 11, 1992).
Respondent registered the <morganstanlet.com> domain name July 1, 2005. The domain name is being used for a website
that features a generic search engine and displays links to third-party
websites, some of which offer financial products and 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
will draw such inferences as the Panel 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 Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
MORGAN STANLEY mark based on its registration of the mark with the USPTO. It is established under the Policy that a
complainant’s registration of a mark with a federal authority establishes a prima
facie case of the complainant’s rights.
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held
that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.”); see also 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.”).
The
only differences between the <morganstanlet.com> domain name and Complainant’s MORGAN
STANLEY mark are the substitution of the letter “t” for the letter “y,” the
addition of the generic top-level domain “.com,” and the omission of the space
between the words in Complainant’s mark.
These changes to Complainant’s mark are insufficient to negate a finding
of confusing similarity and, furthermore, Complainant’s substitution of a
letter in the mark is evidence of “typosquatting,” a practice that involves
taking advantage of simple misspellings of a complainant’s mark to divert
Internet users searching for the complainant.
The Panel concludes that Respondent’s use of typosquatting to create a domain
name renders the disputed domain names confusingly similar to Complainant’s
mark. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that
the <neimanmacus.com> domain name was a
simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was
evidence that the domain name was confusingly similar to the mark); see
also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15,
2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com>
are virtually identical to the complainant’s TD WATERHOUSE name and mark).
The
Panel finds that Policy ¶4(a)(i) has been satisfied.
Complainant
established rights to and legitimate interests in the mark contained within the
disputed domain name. Panels
consistently have held under the Policy that Complainant has the initial burden
of proving that its rights and that respondent lacks such rights and legitimate
interests in the disputed domain name.
In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).
The
Panel has before it no evidence establishing that Respondent is commonly known
by the <morganstanlet.com> domain name. Complainant asserts that Respondent is not a licensee of
Complainant, and according to the WHOIS information for the disputed domain
name, Respondent identifies itself as “Unasi Inc.” Thus, without a response from Respondent to provide any evidence
that it is commonly known by the disputed domain name, the Panel accepts
Complainant’s allegations as true and finds that Respondent has not established
rights or legitimate interests in the disputed domain name under Policy ¶
4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”).
Respondent is
using the <morganstanlet.com> domain name to divert Internet users
searching for information regarding Complainant’s MORGAN STANLEY mark to a
website that features a generic search engine and links to various products and
services, some of which compete with Complainant’s business. Furthermore, the Panel presumes that
Respondent derives commercial benefit from these diversions due to
click-through fees from the links on the website. The Panel finds that such use of confusingly similar versions of
Complainant’s MORGAN STANLEY mark to attract Internet users to Respondent’s
commercial website for Respondent’s benefit does not qualify as a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Additionally, in failing to submit a
response to Complainant’s contentions, Respondent has neglected to provide any
evidence that would challenge Complainant’s prima facie case. The Panel, therefore, finds that Respondent
has not established rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(i) or (iii). See
Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26,
2000) (“In the absence of direct evidence, the complainant and the panel must
resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the
Rules [authorizes] a panel to draw such inferences from respondent’s failure to
respond ‘as it considers appropriate.’”).
The
Panel finds that Policy ¶4(a)(ii) has been satisfied.
The <morganstanlet.com>
domain name resolves to a website that features a generic search engine and a
directory of links to various products and services similar to those of
Complainant. The Panel presumes that
Respondent receives commissions for diverting Internet users to third-party
websites via the search engine and links located at Respondent’s website. Additionally, Respondent’s use of
confusingly similar versions of Complainant’s distinctive MORGAN STANLEY mark
in the domain name creates a likelihood of confusion and suggests an attempt to
attract Internet users to Respondent’s website for Respondent’s commercial
gain. The Panel finds that this is
evidence of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
Moreover,
the <morganstanlet.com> domain name
registered by Respondent consists of a misspelled version of Complainant’s
well-known MORGAN STANLEY mark. Thus,
Respondent is engaging in the practice of “typosquatting” by taking advantage
of a potential typographical error made by Internauts intending to reach a
website corresponding to Complainant’s MORGAN STANLEY mark, who inadvertently
type the letter “t” instead of the letter “y.”
Under the Policy, typosquatting is sufficient evidence of bad faith
registration and use of the disputed domain name. The Panel, therefore, finds that Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v.
domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May
22, 2003) (finding the respondent registered and used the domain name in
bad faith because the respondent “created ‘a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the Respondent’s web site or location’. . . through Respondent’s persistent
practice of ‘typosquatting’”); see also Nat’l Ass’n of Prof’l
Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting … is the intentional misspelling of words with [the] intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”).
The
Panel finds that 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 <morganstanlet.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 15, 2005.
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