Morgan Stanley v. Edward Fitz-James (CT2341-RSC) Cititrust Group Ltd.
Claim Number: FA0510000571918
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 Edward Fitz-James (CT2341-RSC) Cititrust Group Ltd. (“Respondent”), P.O. Box 730, Halifax, NS, B3J2V1, CA.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <morganstanley.law.pro>, registered with DomainPeople.
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.
Robert T. Pfeuffer, Senior District Judge, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 5, 2005.
On October 6, 2005, DomainPeople confirmed by e-mail to the National Arbitration Forum that the <morganstanley.law.pro> domain name is registered with DomainPeople and that the Respondent is the current registrant of the name. DomainPeople has verified that Respondent is bound by the DomainPeople 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 October 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 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@morganstanley.law.pro by e-mail.
An electronic Response was received on November 8, 2005. However, the Response was received after the deadline for response and was not received in hard copy. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule #5(a).
On
November 8, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that it has rights in the MORGAN STANLEY mark
due to its registration of said mark with the United States Patent and
Trademark Office (“USPTO”) and, in addition, has likewise registered such mark
with trademark authorities in other countries of the world. Complainant further argues that Respondent
is not a licensee of Complainant, nor has it been authorized by Complainant to
use the MORGAN STANLEY mark for any purpose.
It is further asserted by Complainant that Respondent has not made any
use of the <morganstanley.law.pro>
domain name and that the domain name resolves to an “under construction”
web page. Complainant therefore asserts
that the <morganstanley.law.pro> domain
name registered by Respondent is identical or confusingly similar to
Complainant’ mark, that Respondent has no legitimate rights nor interests in
said name and Complainant further asserts that Respondent’s actions in
registering the disputed name, <morganstanley.law.pro>,
amounts to registration and
use in bad faith, all in violation of
ICANN Policy ¶ 4(a)(i) “confusing
similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy
¶ 4(a)(iii) “bad faith registration and use.”
B. Respondent
The electronic response furnished by Respondent
was received by the National Arbitration Forum on November 8, 2005. It is noted that the Response was received
after the deadline that the Response was due and was not received in hard copy. Although the National Arbitration Forum does
not consider the Response to be in compliance with ICANN Rule #5(a), the Panel
has decided to review the Response in full in making its decision.
Respondent claims that it is not in violation of
the ICANN Rules and Policy and responds to the Complaint by asserting it is
only engaged in legal services or activities that in no way conflict with the
trademarks or the activities of the investment bankers Morgan Stanley Dean
Witter. Respondent further contends
that it is involved in foreign legal counseling under license in the
international market for import and export rules and regulations, primarily
high tech items, which said legal counseling requires certifications and
licensing for export into certain countries.
Respondent further asserts that it has a duly registered company under
the corporate name of Morgan Stanley Legal Services, P.C., which are not
services in which Morgan Stanley Dean Witter are engaged. Accordingly, Respondent requests that the
Panel reject the Complaint in this case.
C. Additional Submissions
There are no additional submissions by either side in this case.
FINDINGS
The Panel finds that the contentions of
Complainant are well founded and supported by the evidence submitted in this
case, and Respondent has not submitted evidence to support its contention.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds from a
preponderance of the evidence that Complainant has registered its mark with
national trademark authorities. The Panel has determined that such registrations
present a prima facie case of
Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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 <morganstanley.law.pro> domain name, as registered by Respondent, includes Complainant’s MORGAN STANLEY mark in its entirety and adds the generic top-level domain “.pro” and the second-level domain “.law.” The evidence submitted supports Complainant’s contention that the portion of the domain name prior to the “.law.pro” domain is identical to Complainant’s mark and that this alone is sufficient to determine that the domain name is identical in satisfaction of Policy ¶ 4(a)(i). Cf. 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); cf. Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel notes that the Respondent
does not contest Complainant’s claim of rights in the MORGAN STANLEY mark or
the similarity between the <morganstanley.law.pro> domain name and the mark.
The evidence submitted by Complainant convinces the Panel that Respondent is not a licensee of Complainant nor has ever been authorized by Complainant to use the MORGAN STANLEY mark for any purpose. Complainant’s assertion, as here and supported by the evidence, is sufficient to convince the Panel that Complainant has made a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). Therefore, the burden of proof shifts to Respondent to show that it does in fact have rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent who must then demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel finds that the evidence supports Complainant’s contention that Respondent has not established any rights or legitimate interests in the domain name 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 also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Additionally, Complainant has asserted and supports with its evidence under Exhibit “C” that Respondent has not made any use of the <morganstanley.law.pro> domain name and that the domain name resolves to an “under construction” webpage. The Panel therefore determines that Respondent’s failure to use the disputed domain name since it was registered on April 12, 2005 constitutes passive holding. The Panel further finds that Respondent has not provided evidence of its demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore concludes that Respondent has not established any rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); cf. Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the domain name at the time of registration but did not furnish any evidence in support of this claim).
The evidence convinces the Panel that Respondent is passively holding the <morganstanley.law.pro> domain name and has not made demonstrable preparations to use the disputed domain name, therefore, such passive holding is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Complainant further asserts that Respondent is not entitled to register a domain name with the “.law.pro” domain, because Respondent has not furnished evidence to offset the contention that Respondent is not a credentialed provider of legal or law-related services pursuant to the “Registration Restrictions” of the Unsponsored TLD Agreement. See Registration Restrictions, Unsponsored TLD Agreement: Appendix L (Sept. 30, 2004), http://www.icann.org/tlds/agreements /pro/registry-agmt-appl-30sep04.htm. Complainant has brought no precedent to the attention of the Panel supporting this contention and it therefore makes no finding on this allegation.
Complainant additionally has asserted that Respondent is an alter ego of Luis Eduardo Silva de Balboa, a respondent in several other domain-name disputes brought by Complainant. It therefore contends that this shows that Respondent is “engaging in a calculated pattern of bad faith conduct.” The Panel finds that these assertions are supported by the evidence and therefore determines that this is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).
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.law.pro> domain name be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER,
Senior District Judge, Panelist
Dated: November 29, 2005
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