Morgan Stanley v. Domain Park Limited
Claim Number: FA0707001045852
Complainant is Morgan Stanley (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133
Avenue of the
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <morganstanleyclientserver.com>, <morganstanleyclientservices.com>, and <mydeskmorganstanley.com>, registered with Moniker Online Services, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 2007 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@morganstanleyclientserver.com, postmaster@morganstanleyclientservices.com, and postmaster@mydeskmorganstanley.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <morganstanleyclientserver.com>, <morganstanleyclientservices.com>, and <mydeskmorganstanley.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyclientserver.com>, <morganstanleyclientservices.com>, and <mydeskmorganstanley.com> domain names.
3. Respondent registered and used the <morganstanleyclientserver.com>, <morganstanleyclientservices.com>, and <mydeskmorganstanley.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley LLC, uses the MORGAN STANLEY
mark in connection with investment banking and financial services. The mark is currently registered with the
United State Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 issued
August 11, 1992). Additionally, Complainant
has used the CLIENTSERV mark in connection with computer services for providing
financial portfolio management services.
This mark is also registered with the USPTO (Reg. No. 2,322,252 issued
Respondent’s <morganstanleyclientserver.com> domain name, registered on
July 4, 2007, and <mydeskmorganstanley.com>
domain name, registered on July 6, 2007, all resolve to parked web
pages featuring links to third-parties, some of which offer service that are
related to and compete with the services offered under Complainant’s
marks. Respondent is also currently
offering the disputed domain names for sale through an online auction service
located at <sedo.com>. Further,
Respondent has been a party to at least three other similar proceedings by
similar Panels. In all three
proceedings, the disputed domain names were transferred from Respondent. See
LTD Commodities, LLC v. Domain Park
Limited, FA 982996 (Nat. Arb. Forum
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 sufficiently established its rights in the
MORGAN STANLEY and CLIENTSERV marks pursuant to Policy ¶ 4(a)(i) through
registration of the marks with the United States Patent and Trademark
Office. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
The
disputed domain names contain either one or both of Complainant’s marks in
their entirety. They differ from
Complainant’s marks in that they omit the space between MORGAN and
STANLEY. The <morganstanleyclientserver.com> and <morganstanleyclientservices.com>
domain names differ
in that they include variations of the mark CLIENTSERV as “client services” and
“client server,” which both also describe services offer under the CLIENTSERV
mark. The <mydeskmorganstanley.com>
domain name also differs by adding
the generic descriptive term “my desk,” which corresponds and is related to
Complainant’s “mydesk” remote login service that allows Complainant’s employees
to login into work servers from their home computers. Moreover, the addition of a generic top-level domain is not relevant to
a Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain
names. These differences do not negate a finding of
confusing similarity.
As a
result, the Panel finds that the <morganstanleyclientserver.com>, <morganstanleyclientservices.com>,
and <mydeskmorganstanley.com> are confusingly similar to Complainant’s MORGAN STANLEY
and CLIENTSERV marks. See Planned Parenthood Fed’n
of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525
U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s
<plannedparenthood.com> domain name nearly identical); see also
Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding
confusing similarity where respondent combined the complainant’s POKEMON and
PIKACHU marks to form the <pokemonpikachu.com> domain name); Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); Body Shop Int’l PLC v. CPIC NET, D2000-1214
(WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com>
is confusingly similar to the complainant’s THE BODY SHOP trademark); 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 concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out
a prima facie case that Respondent
has no rights or legitimate interests in the domain names at issue. See
TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a
claim under the Policy, Complainant must first establish a prima facie
case. Complainant’s [initial burden] is to provide proof of valid, subsisting
rights in a mark that is similar or identical to the domain name in question.”). The Panel finds that Complainant has met this
burden and accordingly, the burden is shifted to Respondent to demonstrate that
it does have rights or legitimate interests in the disputed domain names. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the
Complaint. The Panel thus presumes that
Respondent has no rights or legitimate interests in the <morganstanleyclientserver.com>, <morganstanleyclientservices.com>,
and <mydeskmorganstanley.com> domain names, but will still
consider all the available evidence with respect to the factors listed in
Policy ¶ 4(c) before making its final determination. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Respondent’s WHOIS
information does not indicate that Respondent is commonly known by the <morganstanleyclientserver.com>, <morganstanleyclientservices.com>,
and <mydeskmorganstanley.com> domain names, nor is there
any other information in the record to indicate that Respondent is or ever has
been known by the disputed domain names.
Further, Respondent has not sought, nor has Complainant granted, a
license or permission to Respondent to use Complainant’s marks in any way. Therefore, the Panel finds that Respondent is
not commonly known by any of the disputed domain names pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have
rights in a domain name when the respondent is not known by the mark); 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).
The disputed domain
names use one or both of Complainant’s marks in their entirety and resolve to
parked web pages that display links to third-party websites that are both
related and unrelated to Complainant’s marks.
Moreover, all three of the disputed domain names are currently being
offered for sale by Respondent through an online auction service located at
<sedo.com>. The Panel finds that
because the disputed domain names are in parked status, offer links to
third-party websites, and are being offered for sale, Respondent is not making
a bona fide offering of goods or
services pursuant to either Policy ¶ 4(c)(i) or using the disputed domain names
in a noncommercial or fair way pursuant to Policy ¶ (4)(c)(iii). As such, the Panel finds that Respondent has no
rights or legitimate interests in the disputed domain names. See Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is currently offering the disputed domain names
for sale through an online auction service located at the <sedo.com>
domain name. The Panel finds establishes
that Respondent registered and is using the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See Bank of
Am. Corp. v. Northwest Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also American Anti-Vivisection Soc’y v. “Infa dot Net”
Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even
if no certain price is demanded, are evidence of bad faith”).
Respondent has been a party to three proceedings similar to
this matter. In all three proceedings,
the disputed domain names were transferred from Respondent. LTD
Commodities, LLC v. Domain Park Limited, FA 982996 (Nat. Arb. Forum
All of the disputed
domain names contain entire versions of one or both of Complainant’s
marks. Moreover, they resolve to parked
web pages that contain links to third-party sites, some of which offer services
related to those offered under Complainant’s marks. It is presumed that Respondent benefits
financially from such use. Accordingly,
the Panel finds this to be further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyclientserver.com>, <morganstanleyclientservices.com>, and <mydeskmorganstanley.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: September 10, 2007
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