Morgan Stanley Smith Barney Holdings LLC v.
Claim Number: FA0912001298245
Complainant is Morgan Stanley Smith Barney Holdings LLC (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mssmithbarney.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 December 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2009.
On December 14, 2009, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <mssmithbarney.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 December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010 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@mssmithbarney.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 13, 2010, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mssmithbarney.com> domain name is confusingly similar to Complainant’s SMITH BARNEY mark.
2. Respondent does not have any rights or legitimate interests in the <mssmithbarney.com> domain name.
3. Respondent registered and used the <mssmithbarney.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley
Smith Barney Holdings LLC, holds multiple trademark registrations with the
United States Patent and Trademark Office (“USPTO”) for the SMITH BARNEY mark (e.g., Reg. No. 1,986,596 issued July 16,
1996) in connection with financial and investment services.
Respondent, Manhattan Consulting Partners, LLC c/o Israrul Hasan, registered the <mssmithbarney.com> domain name on January 13, 2009. The disputed domain name resolves to a website featuring pay-per-click links to commercial websites unrelated to Complainant.
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 asserts rights in its SMITH BARNEY mark through its holding of multiple trademark registrations for the SMITH BARNEY mark with the USPTO (e.g., Reg. No. Reg. No. 1,986,596 issued July 16, 1996). The Panel finds that Complainant has established rights in its SMITH BARNEY mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <mssmithbarney.com> domain name is confusingly
similar to Complainant’s SMITH BARNEY mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s SMITH BARNEY mark because Respondent’s
disputed domain name merely deletes the space between the words in
Complainant’s mark, adds the generic letters “m” and “s” and adds the generic
top-level domain (“gTLD”) “.com.” The Panel
finds that the deletion of the space between the words in Complainant’s mark
does not distinguish the disputed domain name from Complainant’s mark. See
Bond
& Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by
the disputed domain name and that Respondent has not been licensed or
authorized to use the SMITH BARNEY mark in any way. Without evidence to the contrary, 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
Respondent’s disputed domain name was registered on January 13, 2009. The disputed domain name resolves to a
website featuring pay-per-click links to commercial websites unrelated to
Complainant. The Panel finds that
Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb.
Forum June 11, 2006) (finding that the respondent’s use of a domain name to
redirect Internet users to websites unrelated to a complainant’s mark is not a bona
fide use under Policy ¶ 4(c)(i)); see
also Constellation Wines
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is attempting to profit from using Complainant’s
mark in the disputed domain name and attempting to attract Internet users to
Respondent’s website for Respondent’s financial gain. The Panel finds that Respondent’s receipt of
pay-per-click fees from the confusingly similar disputed domain name by
creating a strong likelihood of confusion with Complainant’s SMITH BARNEY mark
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l
Inc. v. This Domain Name My Be For
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 <mssmithbarney.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 27, 2010
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