Morgan Stanley v. J A Tucker
Claim Number: FA1005001325861
Complainant is Morgan Stanley (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is J A Tucker (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanleyresearch.com>, registered with GoDaddy.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2010.
On May 23, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <morganstanleyresearch.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 June 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@morganstanleyresearch.com. Also on June 1, 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 June 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morganstanleyresearch.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleyresearch.com> domain name.
3. Respondent registered and used the <morganstanleyresearch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, holds multiple trademark registrations of the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196 issued August 11, 1992). Complainant provides financial services under the mark, including providing financial research. Complainant has extensive and continuous use of the mark since 1935. Complainant operates an official website resolving from the <morganstanley.com> domain name registered on May 24, 1996.
Respondent, J A Tucker, registered the <morganstanleyresearch.com> domain name on March 5, 2010. The disputed domain name resolves to a website that displays links to third-party websites, some of which compete with Complainant’s services.
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’s trademark registrations of the mark MORGAN STANLEY with the USPTO satisfy the burden to establish rights pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <morganstanleyresearch.com>
domain name is confusingly similar to Complainant’s MORGAN STANELY mark. The disputed domain name removes the space
between terms of the mark, adds a descriptive term related to Complainant’s
business (“research”), and adds a generic top-level domain (“gTLD”) (“.com”).
The Panel finds that these alterations are insufficient to distinguish the
disputed domain name from Complainant’s mark.
See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of
a gTLD do not establish distinctiveness from the complainant’s mark under
Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v.
Zhongqi, FA 917070 (Nat. Arb. Forum
Apr. 9, 2007) (“Elimination of punctuation and
the space between the words of Complainant’s mark … does not sufficiently
distinguish the disputed domain name from the mark pursuant to Policy ¶
4(a)(i).”); see also Gillette Co. v. RFK Assocs., FA 492867
(Nat. Arb. Forum July 28, 2005) (finding that the additions of the term
“batteries,” which described the complainant’s products, and the generic
top-level domain “.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see also Vanguard Group Inc. v. Proven Fin.
Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the
addition of both the word “advisors” and the gTLD “.com” did not sufficiently
alter the disputed domain name to negate a finding of confusing similarity
under Policy ¶ 4(a)(i)). Therefore, the
Panel finds that Respondent’s <morganstanleyresearch.com>
domain name is confusingly similar to Complainant’s MORGAN STANELY mark pursuant
to Policy ¶ 4(a)(i).
The Panel finds Policy ¶
4(a)(i) has been satisifed by Complainant.
Policy ¶ 4(a)(ii) requires Complainant to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, at which time the burden of proof shifts to Respondent. The Panel finds that Complainant’s allegations are sufficent under Policy ¶ 4(a)(ii) to establish a prima facie case against Respondent. Respondent failed to respond to the Complaint, which the Panel construes as an admission to Complainant’s allegations that Respondent lacks rights and legitimate interests in the disputed domain name. However, it is within the Panel’s discretion to review the elements of Policy ¶ 4(c) to establish if Respondent lacks rights or legitimate interests in the <morganstanleyresearch.com> domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The WHOIS information for the <morganstanleyresearch.com> domain name lists “J A Tucker” as the registrant, and Complainant asserts that it has not granted authorization for Respondent to use the MORGAN STANELY mark. The Panel sees no evidence to indicate Respondent rights or legitimate interests in the <morganstanleyresearch.com> domain name pursuant to Policy ¶ 4(c)(ii) and therefore finds that Respondent is not commonly known by the disputed domain name. See Oakley, Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that the value in the Oakley name has been created by the commercial use and registrations of the Complainant and it is also clear . . . that Respondent is taking advantage of the value created by the Complainant.”); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).
Complainant alleges that Respondent lacks rights and legitimate interests in the <morganstanleyresearch.com> domain name because the website resolving from the disputed domain name does not provide a bona fide offering of goods and services nor does it make a legitimate noncommercial or fair use. Complainant states that Respondent’s disputed domain name resolves to a website that lists links to third-party websites, some of which compete with Complainant, and that Respondent likely earns a profit from click-through fees. The Panel finds that providing links to third-party competitors of Complainant is not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also 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).
The Panel finds Policy ¶
4(a)(ii) has been satisifed by Complainant.
Respondent’s <morganstanleyresearch.com> domain name resolves to a website with third-party website links listed, some of which direct Internet users to competitors of Complainant. The Panel finds that diverting Internet users seeking Complainant’s business to third-party websites that offer services in competition with Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also 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)).
Internet users seeking Complainant’s business may become confused by Complainant’s sponsorship or affiliation of the website resolving from Respondent’s disputed domain name, Complainant argues. Respondent likely receives click-through fees when the confused Internet users select one of the displayed hyperlinks. The Panel finds that profiting from the confusion of Internet users indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).
The Panel finds that Respondent had constructive knowledge of Complainant’s MORGAN STANLEY mark, further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel finds Respondent had constructive knowledge sufficient to find bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity).
The Panel deems Policy ¶
4(a)(iii) has been satisifed by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyresearch.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 1, 2010
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