Morgan Stanley v. Swallowlane Holdings Ltd
Claim Number: FA0909001286778
Complainant is Morgan
Stanley (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <morganstanleyserv.com> and <morganstanlley.com>,
registered with Rebel.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2009.
On October 1, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <morganstanleyserv.com> and <morganstanlley.com> domain names are registered with Rebel.com and that Respondent is the current registrant of the names. Rebel.com has verified that Respondent is bound by the Rebel.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 October 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 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@morganstanleyserv.com and postmaster@morganstanlley.com> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 <morganstanleyserv.com> and <morganstanlley.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyserv.com> and <morganstanlley.com> domain names.
3. Respondent registered and used the <morganstanleyserv.com> and <morganstanlley.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent, Swallowlane Holdings Ltd, registered the <morganstanleyserv.com> and <morganstanlley.com> domain names on March 13, 2007 and January 6, 2008, respectively. Each of the disputed domain names resolve to websites that contain links that further resolve to third-party websites, some of which compete directly with Complainant in the financial services industry.
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 finds that Complainant has established rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i) through the multiple registrations of the mark with the USPTO (e.g., Reg. No. 1,707,196 issued August 11, 1992), the UKIPO (e.g., Reg. No. 1,465,887 issued May 30, 1991), and the OHIM (e.g., Reg. No. 175,950 issued November 30, 1998). See Nat’l Westminster Bank plc v. Short, FA 1152426 (Nat. Arb. Forum Apr. 4, 2008) (finding that a complainant established rights in the NATWEST mark pursuant to Policy ¶ 4(a)(i) by virtue of its trademark registrations with the UKIPO, the OHIM, and the USPTO); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s disputed domain names each incorporate the
distinctive portion of Complainant’s MORGAN STANLEY mark with the addition of
an extra letter “l” in the “
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <morganstanleyserv.com> and <morganstanlley.com>
domain names. Once Complainant makes a prima facie case in support
of its allegations, the burden shifts to Respondent to prove that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has made a sufficient prima facie case. Due to
Respondent’s failure to respond to the Complaint, the Panel may assume that
Respondent does not have rights or legitimate interests in the disputed domain
names. However, the Panel will examine the record to determine whether
Respondent has rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertions in this regard.”); 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.”).
The disputed domain names each
resolve to a website featuring sponsored click-through links that further resolve
to the websites of Complainant’s competitors in the financial services
industry. The Panel presumes that
Respondent is generating revenue through the accrual of click-through fees. Thus, the Panel concludes that Respondent’s
use of the <morganstanleyserv.com> and <morganstanlley.com> domain names is not in
connection with a bona fide offering of goods and services under Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain
names pursuant to Policy ¶ 4(c)(iii). See Persohn
v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the
respondent was not using a disputed domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by redirecting Internet users to a commercial
search engine website with links to multiple websites that may be of interest
to the complainant’s customers and presumably earning “click-through fees” in
the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (holding that using an identical or confusingly similar domain name to
earn click-through fees via sponsored links to a complainant’s competitors does
not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii)).
Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names using the MORGAN STANLEY mark. The WHOIS information identifies the registrant as “Swallowlane Holdings Ltd” and this information does not reflect the fact that Respondent has ever been commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).
Moreover, Respondent’s <morganstanlley.com> domain name is an example of
typosquatting. Respondent has engaged in typosquatting by adding an extra
letter “l” in Complainant’s MORGAN STANLEY mark. Respondent’s intentional misspelling of
Complainant’s mark takes advantage of Internet users who attempt to access
Complainant’s website or find information on Complainant’s financial services
and products and mistype Complainant’s mark. The Panel finds that
Respondent’s engagement in typosquatting is further evidence that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See
Microsoft Corp. v. Domain Registration
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <morganstanleyserv.com> and <morganstanlley.com> domain names to resolve to websites featuring links to third-parties, some of which further resolve to the websites of Complainant’s competitors, constitutes a disruption of Complainant’s financial services business. The disputed domain names each redirect Internet users interested in Complainant to Respondent’s website which in turn diverts Internet users to the websites of Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain names constitutes a disruption to Complainant’s business and thus, constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further contends that Respondent is likely generating click-through revenue as a result of the sponsored links that appear at the websites resolving from the <morganstanleyserv.com> and <morganstanlley.com> domain names which were registered on March 13, 2007 and January 6, 2008, respectively. The Panel finds that Respondent is intentionally attempting to attract Internet users for financial gain to its domain names by creating a likelihood of confusion with Complainant and its MORGAN STANLEY mark. Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the <morganstanleyserv.com> and <morganstanlley.com> domain names pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Lastly,
the Panel concludes that Respondent has engaged in typosquatting based on
Respondent’s incorporation of a common misspelling of Complainant’s MORGAN
STANLEY mark in the <morganstanlley.com> domain name.
Respondent is attempting to take advantage of a common misspelling, typing an
extra letter “l” in
The Panel finds 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 <morganstanleyserv.com> and <morganstanlley.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 11, 2009
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