Morgan Stanley v. Juan Carlos Rodriguez Garuti
Claim Number: FA0908001278099
Complainant is Morgan
Stanley (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bankmorganstanley.com>, registered with 1 & 1 Internet 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2009. The Complaint was submitted in both Spanish and English.
On August 13, 2009, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <bankmorganstanley.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 August 19, 2009, a Spanish language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 2009 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@bankmorganstanley.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 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bankmorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <bankmorganstanley.com> domain name.
3. Respondent registered and used the <bankmorganstanley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers retail banking services
to its clients under the MORGAN STANLEY mark throughout the world. Complainant is the owner of the MORGAN
STANLEY mark, registered in countries all over the world, including the Spanish
Office of Patent and Trademarks (“SOPT”) (Reg. No. 1,650,806 issued July 29,
1991) and the Office for Harmonization in the Internal Market (“OHIM”) (Reg.
No.175,950 issued April 1, 1996).
Complainant began its institutional business in
Respondent registered the <bankmorganstanley.com> domain name on July 29, 2009. The disputed domain name resolves to a Spanish website that appears to offer credit card services under the American Express name, which is a direct competitor of Complainant in the credit card services industry. Additionally, the disputed domain name’s resolving website features various click-through advertisements in Spanish. Complainant makes no allegations as to whether the resolving websites for these advertisement links compete with Complainant’s business.
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.
The Panel is satisfied with Complainant’s showing of rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i) through its registration of the mark with the SOPT (Reg. No. 1,650,806 issued July 29, 1991) and the OHIM (Reg. No.175,950 issued April 1, 1996). See Davidoff & Cie SA v. Darnell, FA 97331 (Nat. Arb. Forum July 23, 2001) (finding that the complainant had rights in the DAVIDOFF mark through its multiple trademark registrations for the mark with the Spanish Office of Patents and Marks); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s disputed domain name contains Complainant’s entire MORGAN STANLEY mark with the only alterations being the prefix “bank,” which describes Complainant’s business, and the affixation of the generic top-level domain “.com.” The Panel finds that these modifications fail to negate a finding of confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <bankmorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i). See Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name is confusingly similar to the WELLS FARGO mark, because adding “…the word ’bank,’ a word that both describes the type of business that Complainant engages in and is included in its <wellsfargobank.com> domain name, does not alleviate any confusing similarity.”); see also 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).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests. The Panel finds that Complainant has presented an adequate prima facie case to support its allegations and that Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude that Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests in the <bankmorganstanley.com> domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s disputed domain name resolves to a website that appears to offer credit card services for American Express, a competitor of Complainant in the credit card services industry. The disputed domain name’s resolving website also features advertisement links. The Panel presumes that Respondent is generating revenue from such use of the disputed domain name. Therefore, the Panel finds that Respondent has not used the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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).”).
The
pertinent WHOIS information identifies the registrant of the disputed domain
name as “Juan Carlos Rodriguez Garuti.”
Complainant asserts that Respondent is not commonly known by the
disputed domain name because Complainant has not authorized Respondent to use
its mark, and nothing in the WHOIS information indicates Respondent has ever
been commonly known by the <bankmorganstanley.com> domain
name. The Panel agrees and finds
Respondent is not commonly known by the disputed domain names under Policy ¶
4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding
a respondent has no rights or legitimate interests in a disputed domain name
where there was no evidence in the record indicating that the respondent was
commonly known by the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and is using the disputed domain name, which was registered on July 29, 2009, in bad faith pursuant to Policy ¶ 4(b)(iii). Respondent appears to be using the <bankmorganstanley.com> domain name to provide American Express credit card that compete with the credit card services offered by Complainant. The Panel finds that such use of a confusingly similar domain name constitutes a disruption to Complainant’s business and thus, establishes the Panel’s conclusion that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Moreover, Respondent appears to be generating revenue through the utilization of click-through advertisements on the disputed domain name’s resolving website and through the purported offering of credit card services. The Panel finds that Respondent is using Complainant’s MORGAN STANLEY mark to attract Internet users to its website for financial gain. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use of the <bankmorganstanley.com> domain name under Policy ¶ 4(b)(iv). See 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)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 <bankmorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 28, 2009
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