Morgan Stanley v. Unasi Inc.
Claim Number: FA0512000610162
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 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <morganstaley.com>, <morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>, <morgandtanley.com>, <morgansanley.com>, <morganstalney.com>, <morganstnley.com>, <morgantanley.com>, <motganstanley.com> and <mprganstanley.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com, and <morganstanlry.com>, is registered with Belgiumdomains, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2005.
On December 26, 2005, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the National Arbitration Forum that the <morganstaley.com>, <morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>, <morgandtanley.com>, <morgansanley.com>, <morganstalney.com>, <morganstnley.com>, <morgantanley.com>, <motganstanley.com> and <mprganstanley.com> domain names are registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the names. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 December 18, 2005, Belgiumdomains,
LLC confirmed by e-mail to the National Arbitration Forum that the <morganstanlry.com>
domain name is registered with Belgiumdomains, LLC and that Respondent is
the current registrant of the domain name.
Belgiumdomains, LLC has verified that Respondent is bound by the
Belgiumdomains, LLC 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 December 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 17, 2006 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@morganstaley.com, postmaster@morganstnaley.com, postmaster@morganstanlry.com, postmaster@moragnstanley.com, postmaster@morganatanley.com, postmaster@morgandtanley.com, postmaster@morgansanley.com, postmaster@morganstalney.com, postmaster@morganstnley.com, postmaster@morgantanley.com, postmaster@motganstanley.com and postmaster@mprganstanley.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morganstaley.com>, <morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>, <morgandtanley.com>, <morgansanley.com>, <morganstalney.com>, <morganstnley.com>, <morgantanley.com>, <morganstanlry.com>, <motganstanley.com> and <mprganstanley.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstaley.com>, <morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>, <morgandtanley.com>, <morgansanley.com>, <morganstalney.com>, <morganstnley.com>, <morgantanley.com>, <morganstanlry.com>, <motganstanley.com> and <mprganstanley.com> domain names.
3. Respondent registered and used the <morganstaley.com>, <morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>, <morgandtanley.com>, <morgansanley.com>, <morganstalney.com>, <morganstnley.com>, <morgantanley.com>, <morganstanlry.com>, <motganstanley.com> and <mprganstanley.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, an international leader in investment banking and financial services, was founded in 1935. In 1997, Complainant merged with Dean Witter, Discover & Co. to form Morgan Stanley Dean Witter & Co. Complainant then changed its name to Morgan Stanley in 2002. Complainant offers a full range of financial and investment services to its clients through a combination of institutional and retail capabilities. Complainant has over 600 offices in 28 countries.
Complainant is the owner of the MORGAN STANLEY family of marks, which has been developed and used by Complainant and its predecessors-in-interest since at least as early as 1935 and remains in use in numerous countries including the United States and Panama. Complainant owns trademark registration for the MORGAN STANLEY mark though registration of the mark with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 1,707,196, issued August 11, 1992). Complainant has used, promoted and advertised its MORGAN STANLEY mark extensively in the field of financial services and products, and as a result, has become internationally recognized.
Respondent registered the following domain names on the following dates: <morganatanley.com> on January 19, 2005; <morgantanley.com> and <mprganstanley.com> on January 24, 2005; <moragnstanley.com> and <motganstanley.com> on February 28, 2005; <morganstalney.com> on March 28, 2005; <morgandtanley.com> on April 3, 2005; <morganstnaley.com> on September 9, 2004; <morgansanley.com> on October 3, 2004; <morganstnley.com> on October 6, 2004; <morganstanlry.com> on October 28, 2005; and <morganstaley.com> on November 25, 2003. Respondent is using the disputed domain names to host websites that contain links to a variety of third-party businesses, some of which offer financial services similar to the financial services that Complainant offers.
Respondent has been involved in several domain disputes involving misspelled versions of third party marks. Specifically, in a prior dispute with Complainant over the <morganstanlet.com> domain name, the Panel ordered Respondent to transfer the domain to Complainant. See Morgan Stanley v. Unasi, Inc., FA 529514 (Nat. Arb. Forum Sept. 15, 2005).
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 has established rights in the MORGAN STANLEY mark through registration with the USPTO. 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.”).
Complainant asserts that the <morganstaley.com>, <morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>, <morgandtanley.com>, <morgansanley.com>, <morganstalney.com>, <morganstnley.com>, <morgantanley.com>, <morganstanlry.com>, <motganstanley.com> and <mprganstanley.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i), because the domain names consist of misspellings of Complainant’s mark, including the addition and omission of extra or necessary letters. The Panel finds that Respondent’s domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Additionally, the Panel finds the deletion of spaces in Respondent’s domain names have no legal significance in determining whether the disputed domain names are confusingly similar to Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Furthermore, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain names to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i). 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or
legitimate interests in the <morganstaley.com>,
<morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>,
<morgandtanley.com>, <morgansanley.com>, <morganstalney.com>,
<morganstnley.com>, <morgantanley.com>, <morganstanlry.com>,
<motganstanley.com> and <mprganstanley.com> domain
names. When a Complainant establishes a
prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain names. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names 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). Moreover, Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services because the domain names resolve to a website containing links to competing financial businesses. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of numerous typosquatted versions of Complainant’s MORGAN STANLEY mark is sufficient to establish bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel also finds that Respondent intentionally
registered the disputed domain names incorporating Complainant’s mark to divert
Internet users to its commercial website. The Panel concludes that such activity
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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).
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 <morganstaley.com>, <morganstnaley.com>, <moragnstanley.com>, <morganatanley.com>, <morgandtanley.com>, <morgansanley.com>, <morganstalney.com>, <morganstnley.com>, <morgantanley.com>, <morganstanlry.com>, <motganstanley.com> and <mprganstanley.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 1, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum