Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. EnviroCitizen, LLC.
Claim Number: FA1008001342402
PARTIES
Complainant is Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is EnviroCitizen, LLC. (“Respondent”), represented by John W. Dozier, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <screwedbymorganstanleysmithbarney.com> and <screwedbymorganstanley.com>, registered with GoDaddy.com, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael A. Albert, G. Gervaise Davis III, and Mark McCormick as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2010.
On August 24, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <screwedbymorganstanleysmithbarney.com> and <screwedbymorganstanley.com> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the names. 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 August 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@screwedbymorganstanleysmithbarney.com and postmaster@screwedbymorganstanley.com by e-mail. Also on August 25, 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.
A timely Response was received and determined to be complete on September 14, 2010.
Complainant’s Additional Submission was received on September 20, 2010 in compliance with Supplemental Rule 7.
On September, 27, 2010 the above named parties to the instant proceedings filed a Joint Request to Stay the Administrative Proceeding for forty-five days under Supplemental Rule 6(b)(i). Also on September 27, 2010 the National Arbitration Forum approved the Stay Request setting a deadline to renew the proceedings on November 11, 2010. On November 9, 2010 Respondent requested that the Joint Request to Stay the Administrative Proceeding be removed pursuant to Supplemental Rule 6(b)(ii). On November 10, 2010 Respondent’s request was granted by the Forum and the case was renewed for Panel appointment.
Respondent’s Additional Submission was received on November 10, 2010 in compliance with Supplemental Rule 7.
On November 12, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael A. Albert, G. Gervaise Davis III, and Mark McCormick as Panelists.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006) (permitting multiple complainants who demonstrated sufficient link); American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004) (same); Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (same).
There are two Complainants in this matter: Morgan Stanley and Morgan Stanley Smith Barney. Complainant Morgan Stanley is the owner of the MORGAN STANLEY marks under which it offers financial investment and wealth management services. Complainant Morgan Stanley Smith Barney was created as a joint venture between Morgan Stanley and Citigroup, Inc. Morgan Stanley Smith Barney owns the SMITH BARNEY marks under which it offers financial services centering on the wealth management industry. Complainants contend that Complainant Morgan Stanley is the majority shareholder in Complainant Morgan Stanley Smith Barney. Respondent has not presented contrary evidence. Thus, the Panel finds Complainants have established a sufficient link between them to justify treating Complainants as one entity in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it owns numerous trademark registrations with governmental trademark authorities worldwide for its MORGAN STANLEY and SMITH BARNEY marks. Complainant’s MORGAN STANLEY marks include those with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 issued August 11, 1992). Complainant’s SMITH BARNEY marks also include registrations with the USPTO (e.g., Reg. No. 1,986,596 issued July 16, 1996).
Complainant contends that the <screwedbymorganstanleysmithbarney.com> is confusingly similar to its MORGAN STANLEY and SMITH BARNEY marks because the domain name removes the spaces between the terms of its marks, combines the two marks and adds the generic term “screwed by.” Complainant further contends that the <screwedbymorganstanley.com> domain name combines Complainant’s MORGAN STANLEY mark with the generic terms “screwed by.” Complainant contends that neither domain name is distinguished from Complainant’s marks simply by adding the term “screwed by” to its marks, and that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domains, and Complainant has not authorized Respondent to use the MORGAN STANLEY or SMITH BARNEY marks.
Complainant contends that Respondent is using the disputed domain names as parked websites with the registrar, Godaddy.com, and that these websites feature third-party links to Complainant’s competitors in the financial services industry. Complainant alleges that Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by diverting Internet users to Complainant’s competitors. Complainant further contends that Respondent receives click-through fees from its use of the disputed domain names to display third-party links to Complainant’s competitors. Complainant contends that Respondent’s intends to attract Internet users to its websites for commercial gain and that this is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
B. Respondent
Respondent contends that the disputed domain names are not confusingly similar to Complainant’s marks because Respondent has inserted the term “screwed by” as a prefix to Complainant’s marks, thereby eliminating any confusing similarity between the domain names and Complainant’s marks. Respondent contends that previous panels have determined that by adding terms such as “sucks” to a complainant’s mark respondents have distinguished the disputed domain names from the trademarks.
Respondent contends that it is making a legitimate noncommercial fair use of the disputed domain names under Policy ¶ 4(c)(iii). Respondent alleges that it uses domain names to lead Internet users to its websites that host consumer complaint forums. Respondent further contends that it does not maintain or profit from the advertisements displayed using the domain names at issue and that the registrar receives all resulting revenue from the advertisements.
Respondent asserts that it does not plan and has not attempted to sell the domain names. Further, Respondent argues that it does not receive click-through compensation from the links displayed on the parked websites, over which Respondent asserts it has no control.
Respondent claims that it has not attempted to attract Internet users to its website for commercial gain because there is no likelihood of confusion created by the domain names with Complainant’s marks. Respondent contends that by using the term or phrase “screwed by” in the domain names all likelihood of confusion on the part of Internet users should be eliminated. Further, Respondent contends that when it implements its redirection scheme from the parked websites to its own criticism website the website will contain a disclaimer as to Complainant’s relationship with Respondent.
C. Additional Submissions
Complainant questions whether Respondent genuinely plans to use the domain names to redirect to Respondent’s <screwedbyforums.com> domain because this domain already contains a page incorporating Complainant’s mark, i.e., <screwedbyforums.com/morgan-stanley-smith-barney>. Complainant further contends that Respondent uses the “screwed by” prefix with other domain names related to other financial institutions, but that these websites currently resolve to a “Coming Soon” type of website. Complainant contends that “the panelists should not give any credence to Respondent’s claims regarding its future plans with the disputed domain names” because Respondent has failed to provide “any conceivable reason why Respondent wishes to treat the dispute [sic] domain names differently from the other domain names it has registered.”
Complainant argues that Respondent is fully responsible for and has control over the content it allows to be displayed on its websites, including the third-party hyperlinks to competing financial services. Complainant argues that Respondent’s contentions that it is going to be using the domain names at some point in the future to redirect to a third-party website providing a forum for criticism is irrelevant.
Respondent contends that the disputed domain names will increase the likelihood that Internet users will reach Respondent’s complaint boards at <screwedbyforums.com>.
Respondent further contends that its use of parked websites was temporary and that Respondent did not have the opportunity to launch its planned websites because of the speed with which Complainant filed the Complaint. Respondent contends that the 23-day period of using parked webpages distinguishes its circumstances from cases which resulted in findings of no legitimate interests because such cases involved longer uses of parked webpages.
Respondent further argues that the Policy contemplates the relevancy of preparations of content for future websites because Paragraph 4(c)(i) states that a respondent may demonstrate rights and legitimate interests in a domain name through “demonstrable preparations to use” the domain name for a bona fide offering of goods or services prior to notice of the dispute. Respondent further contends that the drafts of future website content to be used on the disputed domain names were prepared prior to the date on which Respondent received notice of this dispute.
FINDINGS
For the reasons set forth below, the Panel finds Complainant has not proven that the domain names should be transferred.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 the addition of the phrase “screwed by” to the disputed domain names eliminates the possibility of confusion. See Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (finding that domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner and therefore cannot be considered confusingly similar); see also Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding <wallmartcanadasucks.com> not identical or similar to Wal-Mart’s marks).
The disputed domain names are not confusingly similar to Complainant’s marks because no reasonable person would conclude that a financial institution would have any relationship with a domain name that adds the word “screwed by” to its mark. See KB Home v. RegisterFly.com- Ref# 9323034, FA 506771 (Nat. Arb. Forum Aug. 30, 2005) (finding addition of term “sucks” to complainant’s KB HOME mark in <kbhomesucks.com> not confusingly similar because a reasonable person would not conclude that a person who registers a domain name containing term “sucks” has any relation to mark owner); see also Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (noting that use of negative domain name for purposes of criticism does not create confusion with complainant’s mark); see also Royal Bank of Scotland Group v. natwestfraud.com, D2001-0212 (WIPO June 18, 2001) (finding <natwestfraud.com> not confusingly similar to NATWEST mark because “fraud” is a common English term with a pejorative meaning and therefore distinguishes domain name from complainant’s mark).
For the foregoing reasons, Complainant has not proven the first element of the Policy.
Because Complainant has not proven the first element of the Policy, the Panel need not analyze the remaining two elements. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding complainant’s failure to prove one element makes further inquiry into remaining elements unnecessary). However, the Panel elects to evaluate the remaining elements for the sake of completeness.
The Panel finds that Respondent is not commonly known by the disputed domain, and Complainant has not authorized Respondent to use the MORGAN STANLEY or SMITH BARNEY marks.
Complainant, however, has failed to prove that Respondent has no legitimate interests in the disputed domain names for the following reasons. In its supplemental submission of September 19, 2010, Complainant asked the Panel to consider Respondent’s failure to develop its similar “screwed by” domain names, such as <screwedbyjpmorganchase.com> and <screwedbycharlesschwab.com>, as evidence tending to undermine Respondent’s alleged future plans to develop the disputed domain names for purposes of criticism. Accepting Complainant’s invitation to consider these domain names, the Panel notes that Respondent has developed these domain names in a manner similar to that which it proposed for the disputed domain names. In addition, evidence submitted by Respondent of its <screwedbyforums.com> domain indicates that Respondent has devoted considerable resources to providing a forum for criticism of a broad range of businesses, suggesting that Respondent plausibly intends to make a legitimate noncommercial or fair use of the disputed domain names if given the opportunity.
In view of the foregoing, Complainant has failed to prove the second element of the Policy.
The Panel finds that Respondent did not register or use the disputed domain names in bad faith where Respondent’s intent is to redirect the domain names to its criticism forum website rather than for a commercial purpose. See Homer TLC, Inc. v. GreenPeople, FA 550345 (Nat. Arb. Forum Oct. 25, 2005) (finding registration of <homedepotsucks.com> not in bad faith). Complainant has failed to offer sufficient evidence to show the following: that Respondent has offered to sell the domain names; that Respondent registered to prevent Complainant from itself using the domain names; that Respondent is a competitor seeking to disrupt Complainant’s business; or that Respondent’s registrations were for commercial gain. To establish bad faith registration and use, Complainant must provide more than mere assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding mere assertions of bad faith registration and use insufficient).
Thus, Complainant has also failed to prove the third element of the Policy.
DECISION
Having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint is dismissed.
Michael A. Albert, G.
Gervaise Davis III, and Mark McCormick, Panelists
Dated: November 26, 2010
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