Morgan Stanley v. Transure Enterprise Ltd c/o Host Master
Claim
Number: FA1003001315189
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 <morganstaanley.com> and <morgannstanley.com>, registered with Above.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2010.
On March 25, 2010, Above.com confirmed by e-mail to the National Arbitration Forum that the <morganstaanley.com> and <morgannstanley.com> domain names are registered with Above.com and that Respondent is the current registrant of the names. Above.com has verified that Respondent is bound by the Above.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 March 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@morganstaanley.com and postmaster@morgannstanley.com. Also on March 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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" through submission of a Written Notice, as defined in Rule 1. 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 <morganstaanley.com> and <morgannstanley.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstaanley.com> and <morgannstanley.com> domain names.
3. Respondent registered and used the <morganstaanley.com> and <morgannstanley.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, has registered its MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 issued August 11, 1992). Complainant uses the mark in connection with financial and investment services.
Respondent, Transure Enterprise Ltd c/o Host Master, registered the disputed domain name <morganstaanley.com> on February 17, 2008 and the disputed domain name <morgannstanley.com> on August 7, 2009. The disputed domain names each resolve to a web directory of commercial third-party websites that includes competitors of Complainant.
Respondent has been the respondent in prior UDRP
proceedings, resulting in the disputed domain names’ transfer to the respective
complainants. See Edible Arrangements,
LLC v. Transure Enterprise Ltd, FA1303677 (Nat. Arb. Forum March 12, 2010); see also Hot Topic v. Transure Enterprise
Ltd, FA1301619 (Nat. Arb. Forum February 22, 2010); see also Vans Inc. v. Transure Enterprise Ltd, FA1300854 (Nat.
Arb. Forum February 17, 2010); see also
Aeropostale, Inc. v. Transure Enterprise Ltd, FA129041 (Nat. Arb. Forum
December 15, 2009); see also Ryder System
Inc. v. Transure Enterprise Ltd, FA1274369 (Nat. Arb. Forum August 31,
2009).
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 it has rights in its MORGAN STANLEY mark
due to its registration with the USPTO (Reg. No. 1,707,196 issued August 11,
1992). The Panel finds that Complainant’s registration of its MORGAN STANLEY
mark with the USPTO is sufficient to establish Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v.
Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from
a preponderance of the evidence that the complainant had registered its mark
with national trademark authorities, the Panel determined that “such
registrations present a prima facie
case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not
matter whether the complainant has registered its trademark in the country in
which the respondent resides, only that it can establish rights in some
jurisdiction).
Complainant asserts that the disputed domain names are
confusingly similar to Complainant’s distinctive and famous MORGAN STANLEY
mark. Respondent’s <morganstaanley.com> and domain
name adds an additional letter “a” to Complainant’s mark and Respondent’s <morgannstanley.com> domain name adds an
additional letter “n” to Compainant’s mark. Further, both disputed
domain names remove the space in Complainant’s mark and both add the generic
top-level domain “.com.” The Panel finds the misspellings of the mark in the
disputed domain names are minor alterations that do not differentiate the
disputed domain names from Complainant’s mark. Therefore, the Panel concludes
the disputed domain names are confusingly similar to Complainant’s mark,
pursuant to Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat.
Arb. Forum July 23, 2002) (finding that the <neimanmacus.com>
domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark
and was a classic example of typosquatting, which was evidence that the domain
name was confusingly similar to the mark); see
also Bond & Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case in support of this, the burden shifts to the Respondent to establish rights or legitimate interests in the disputed domain names, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). 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 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.”).
The WHOIS information for <morganstaanley.com> and <morgannstanley.com> domain names lists “Transure Enterprise Ltd c/o Host Master” as the registrant, which indicates that Respondent is not commonly known by either of the disputed domain names. Complainant asserts no license or other authorization has been given to Respondent to use the MORGAN STANLEY mark. Furthermore, Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Without affirmative evidence, the Panel finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses each of the <morganstaanley.com> and <morgannstanley.com> domain names for a web directory with links to third-party competitors of Complainant. The Panel finds that Respondent’s use of the <morganstaanley.com> and <morgannstanley.com> domain names are not 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). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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).
Complainant asserts that the disputed domain names are each an
intentional misspelling of the MORGAN STANLEY mark. Complainant further asserts
that Respondent is capitalizing on these misspellings to misdirect Internet
users seeking Complainant’s services. The
Panel finds that this constitutes the practice of typosquatting, which is
evidence that Respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant asserts that Respondent has a pattern of
cybersquatting as evidenced by several adverse UDRP proceedings against
Respondent. Complainant has offered multiple
other UDRP decisions against Respondent where Respondent was found to have registered
and used other disputed domain names in bad faith See Edible Arrangements, LLC v. Transure Enterprise Ltd, FA1303677
(Nat. Arb. Forum March 12, 2010); see
also Hot Topic v. Transure Enterprise Ltd, FA1301619 (Nat. Arb. Forum
February 22, 2010); see also Vans Inc. v.
Transure Enterprise Ltd, FA1300854 (Nat. Arb. Forum February 17, 2010); see also Aeropostale, Inc. v. Transure
Enterprise Ltd, FA129041 (Nat. Arb. Forum December 15, 2009); see also Ryder System Inc. v. Transure
Enterprise Ltd, FA1274369 (Nat. Arb. Forum August 31, 2009). The Panel finds Respondent’s pattern of
registration and use of disputed domain names to constitute bad faith pursuant
to Policy ¶ 4(b)(ii).
See Westcoast Contempo
Fashions Ltd. v.
Respondent’s <morganstaanley.com>
and
<morgannstanley.com> domain names each resolve to a web
directory that contains links to third-party websites that compete with the
Complainant. The Panel finds
Respondent’s registration and use of the disputed domain names to divert
Internet users to a website in competition with the Complainant constitutes a
disruption of Complainant’s business and qualifies as bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by
using the disputed domain names to operate a commercial search engine with
links to the products of the complainant and to complainant’s competitors, as
well as by diverting Internet users to several other domain names); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Complainant asserts that Internet users, searching for Complainant’s services, will be confused by the disputed domain names when they each resolve to a web directory with links to third-party competitors of Complainant. Further, Internet users may become confused as to Complainant’s sponsorship or affiliation with the disputed domain names and resolving websites. Complainant asserts that Respondent attempts to profit from this likelihood of confusion through its presumed receipt of click-through fees by linking to third-party websites. Therefore, the Panel finds Respondent’s use of the <morganstaanley.com> and <morgannstanley.com> domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel has previously concluded that Respondent is
engaged in the practice of typosquatting through the use of the <morganstaanley.com> and
<morgannstanley.com> domain names. The Panel finds that this practice is further
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the
respondent’s registration and use of the <nextell.com> domain name was in
bad faith because the domain name epitomized typosquatting in its purest form);
see also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding
that the <dermatalogica.com> domain name was a “simple misspelling” of
the complainant's DERMALOGICA mark which indicated typosquatting
and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds 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 <morganstaanley.com> and <morgannstanley.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 30, 2010
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