Morgan Stanley v. Purple Bucquet / Purple
Claim Number: FA1007001336613
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 <marganstanley.com>, registered with Power Brand Center 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2010.
On July 23, 2010, Power Brand Center Inc. confirmed by e-mail to the National Arbitration Forum that the <marganstanley.com> domain name is registered with Power Brand Center Inc. and that Respondent is the current registrant of the name. Power Brand Center Inc. has verified that Respondent is bound by the Power Brand Center 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 July 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@marganstanley.com. Also on July 27, 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 August 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <marganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <marganstanley.com> domain name.
3. Respondent registered and used the <marganstanley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, offers a full range of
financial and investment services to clients around the world. Complainant has offices in 29 countries,
including the
Mark Reg. No. Date issued
MORGAN STANLEY 1,707,196 August 11, 1992;
MORGAN STANLEY 2,729,993 June 24, 2003;
MORGAN STANLEY CLIENT LINK 2,759,476 September 2, 2003;
MORGAN STANLEY VISION 2,852,094 June 8, 2004;
MORGAN STANLEY ACCESS 2,872,848 August 10, 2004;
MORGAN STANLEY INVESTOR STYLES 2,919,873 January 18, 2005; &
MORGAN STANLEY CLIENTONE 3,096,321 May 23, 2006.
Respondent, Purple Bucquet / Purple, registered the <marganstanley.com> domain name on March 30, 2005. The disputed domain name resolves to a directory website listing pay-per-click links to various competing financial and investment-related products and services offered by third parties.
Respondent has been the respondent in at least eight other UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See Charlotte Russe Merch., Inc. v. Purple Bucquet, FA 1319965 (Nat. Arb. Forum June 3, 2010); see also RGH Enters., Inc. v. Purple Bucquet, FA 1325215 (Nat. Arb. Forum July 8, 2010); see also Atl. Southeast Airlines, Inc. v. Purple Bucquet, FA 1326434 (Nat. Arb. Forum June 30, 2010).
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 owns multiple trademark registrations with the USPTO for the MORGAN STANLEY and related marks:
Mark Reg. No. Date issued
MORGAN STANLEY 1,707,196 August 11, 1992;
MORGAN STANLEY 2,729,993 June 24, 2003;
MORGAN STANLEY CLIENT LINK 2,759,476 September 2, 2003;
MORGAN STANLEY VISION 2,852,094 June 8, 2004;
MORGAN STANLEY ACCESS 2,872,848 August 10, 2004;
MORGAN STANLEY INVESTOR STYLES 2,919,873 January 18, 2005; &
MORGAN STANLEY CLIENTONE 3,096,321 May 23, 2006.
The Panel finds that Complainant’s federal trademark
registrations in the
Complainant contends that Respondent’s <marganstanley.com> domain name is
confusingly similar to Complainant’s MORGAN STANLEY mark. The only differences between the disputed
domain name and Complainant’s mark are the misspelling that exchanges the
letter “a” for the letter “o,” the elimination of the space between the terms,
and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that a minor misspelling of
Complainant’s mark is an insignificant change that does not diminish the
confusing similarity of the domain name for the purposes of Policy ¶
4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29,
2001) (finding the <belken.com> domain name confusingly similar to the
complainant's BELKIN mark because the name merely replaced the letter “i” in
the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175
(Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to
be confusingly similar to the complainant’s INTELIUS mark because the domain
name differed from the mark by one letter and was visually similar). The Panel also finds that eliminating the
space between the terms and appending the gTLD “.com” do nothing to transform
the disputed domain name into a domain name distinct from Complainant’s mark. See Am.
Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec.
31, 2007) (finding that “spaces are impermissible and a generic top-level
domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Bond & Co. Jewelers, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent when alleging that Respondent does not possess rights and legitimate interests in the disputed domain name. Upon presentation of a sufficient case, as the Panel finds has occurred in this proceeding, the burden shifts to Respondent to refute Complainant’s allegations and prove Respondent’s rights or legitimate interests in the disputed domain name. Due to Respondent’s failure to respond, however, the Panel finds that Respondent has not met this burden and has shown no rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). The Panel will consider the evidence in the record, however, in light of the Policy ¶ 4(c) factors in order to make a complete determination on the issue.
Complainant contends that Respondent is not commonly known by the <marganstanley.com> domain name. Complainant asserts that neither “Morgan Stanley” nor the domain name <marganstanley.com> is part of Respondent’s name as listed in the WHOIS information, “Purple Bucquet c/o Purple.” Complainant also argues that Respondent submits no evidence of using the disputed domain name in connection with a business and that Respondent is not a licensee of Complainant. As a result, the Panel finds that Complainant has not shown rights and legitimate interests under Policy ¶ 4(c)(ii) because it is not commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant argues that Respondent’s only purpose in
registering the <marganstanley.com>
domain name is to post a collection of financial and investment-related pay-per-click
links that compete with Complainant’s goods and services. The Panel finds that without other evidence
to the contrary, using the disputed domain name to display competing
pay-per-click links does not comport with a bona
fide offering of goods or services required by Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use according to 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 WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding
that the respondent’s use of the disputed domain name
to redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Complainant
argues that the primary difference between Respondent’s <marganstanley.com> domain name and
Complainant’s mark is the switching of the letter “a” for the letter “o.” Complainant alleges that this is an
intentional misspelling meant to take advantage of both the fame of
Complainant’s mark and the frequency of Internet users making typographical
errors when searching for Complainant.
The Panel finds that registering a domain name consisting of
typographical errors, such as the <marganstanley.com>
domain name, constitutes typosquatting, which is further evidence
that Respondent does not possess rights and legitimate interests in the
disputed domain name according to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has been the respondent
in at least eight other UDRP proceedings in which the disputed domain names
were transferred to the respective complainants. See
Charlotte Russe Merch., Inc. v. Purple Bucquet, FA 1319965 (Nat. Arb. Forum
June 3, 2010); see also RGH Enters., Inc.
v. Purple Bucquet, FA 1325215 (Nat. Arb. Forum July 8, 2010); see also Atl. Southeast Airlines, Inc. v.
Purple Bucquet, FA 1326434 (Nat. Arb. Forum June 30, 2010). Complainant argues that Respondent’s negative
UDRP history indicates that Respondent has a pattern of registering third-party
marks in domain names that prevent the owners of those marks from effectively
using their marks on the Internet. The
Panel therefore finds that Respondent’s registration of the <marganstanley.com> domain name is
consistent with this negative pattern of domain name registration and reveals
Respondent’s bad faith registration and use according to Policy ¶
4(b)(ii). See Nat’l Abortion
Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat.
Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii)
because the domain name prevented the complainant from reflecting its mark in a
domain name and the respondent had several adverse decisions against it in
previous UDRP proceedings, which established a pattern of cybersquatting); see also Société Air France v.
Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and
use pursuant to Policy ¶ 4(b)(ii) where the
complainant provided evidence of a pattern of registration of “numerous other
domain names” by the respondent).
Complainant contends that the links hosted at the <marganstanley.com> domain name all relate to financial and investment service and therefore compete with Complainant. The similarity between the products and services offered by Complainant and those advertised in the pay-per-click links on Respondent’s resolving website results in a greater likelihood that Internet users diverted to Respondent’s website will be interested in the links and become customers lost to Complainant. As Respondent’s sponsorship of these competing links disrupts Complainant’s business, the Panel finds Respondent’s activities to be evidence of bad faith registration and use for the purposes of 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant alleges that Respondent registered a misspelled
version of Complainant’s MORGAN STANLEY mark as the disputed domain name to take
advantage of the fame of Complainant’s mark and attract Internet users who are
seeking Complainant or products and services offered by Complainant. Complainant argues that Respondent then
diverts these Internet users to its pay-per-click website where it profits from
each link clicked. The Panel finds that
Respondent’s efforts to commercially gain by misleading and attracting
Complainant’s customers with its use of Complainant’s mark indicates bad faith
registration and use under Policy ¶ 4(b)(iv). See
The Panel has previously concluded that Respondent has engaged in typosquatting through its registration and use of the confusingly similar <marganstanley.com> domain name. The Panel finds typosquatting to be evidence in itself of bad faith registration and use according to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under 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 <marganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 6, 2010
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