Morgan Stanley v. Bridge Port Enterprises Limited
Claim Number: FA1011001355850
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Bridge Port Enterprises Limited (“Respondent”), Antigua and Barmuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmipomorganstanley.com>, registered with FABULOUS.COM PTY LTD.
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 November 1, 2010; the National Arbitration Forum received payment on November 1, 2010.
On November 2, 2010, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <gmipomorganstanley.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the names. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@gmipomorganstanley.com. Also on November 3, 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 November 29, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <gmipomorganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANELY mark.
2. Respondent does not have any rights or legitimate interests in the <gmipomorganstanley.com> domain name.
3. Respondent registered and used the <gmipomorganstanley.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 through institutional and retail venues under the MORGAN STANELY mark. The MORGAN STANELY mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 issued August 11, 1992).
Respondent, Bridge Port Enterprises Limited, registered the disputed domain name <gmipomorganstanley.com> on October 19, 2010. The domain name resolves to a links page with links to various financial services. These include “Online Stock Trading,” “401k,” and “Mutual Funds.”
Respondent has been a respondent in numerous other domain name disputes where domain names have been transferred from Respondent to the respective complainants. See Tyson Foods, Inc. v. Bridge Port Enterprises Limited, FA 1302298 (Nat. Arb. Forum Oct. 28, 2009); see also JohnsonDiversey, Inc. v. Bridge Port Enterprises Limited, FA 1284837 (Nat. Arb. Forum Aug 12, 2009); see also Wells Fargo & Company v. Bridge Port Enterprises Limited, FA 1271507 (Nat. Arb. Forum Aug. 10, 2009); see also Hershey Chocolate & Confectionery Corporation v. Bridge Port Enterprises Limited, FA 1268733 (Nat. Arb. Forum Aug. 5, 2009); see also Intelius Inc. v. Bridge Port Enterprises Limited, FA 1270254 (Nat. Arb. Forum July 23, 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 contends it holds adequate rights in the MORGAN STANELY mark to proceed with this claim. To evidence this, Complainant has provided the mark’s registration with the USPTO (Reg. No. 1,707,196 issued August 11, 1992). The Panel finds this evidence conclusive and therefore finds Complainant has sufficient rights in the MORGAN STANELY mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel also finds that the disputed domain name <gmipomorganstanley.com> is confusingly similar to Complainant MORGAN STANELY MARK. The greatest indicator that the mark is confusingly similar is that the disputed domain name is wholly encompassed in the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). MORGAN STANELY is used in its entirety with only a few descriptive and generic additions. Respondent’s first addition is the term “gmipo.” This term likely describes the general motors initial public offering (“gmipo”) that Complainant is co-underwriting. The use of a descriptive term in a domain name with generic top-level domain name does not distinguish a domain name from a mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that the disputed domain <gmipomorganstanley.com> is confusingly similar to Complainant’s MORGAN STANELY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <gmipomorganstanley.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The Panel finds that the evidence indicates that Respondent is not commonly known by the disputed domain name. The WHOIS information of the disputed domain name indicates that Respondent is known by “Bridge Port Enterprises Limited” and not any form of the disputed domain name. Respondent has not offered any evidence indicating that it is commonly known by the domain name either. The Panel finds this evidence indicates that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(i). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also 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).
Complainant alleges that Respondent is using the disputed domain name as a links page diverting Internet users to other websites and therefore has no bona fide offering of goods or services and no legitimate non-commercial or fair use. The Panel agrees and finds Respondent’s website is diverting Internet users away from Complainant’s web presence. Respondent’s website resolves to a list of links that divert Internet users to websites with similar services as Complainant. The Panel presumes that Respondent receives compensation for this use of the website. Therefore, the Panel finds that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant alleges Respondent’s use of the <gmipomorganstanley.com> domain name is a part of a pattern of bad faith use and registration. Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See Tyson Foods, Inc. v Bridge Port Enterprises Limited, FA 1302298 (Nat. Arb. Forum Oct. 28, 2009); see also JohnsonDiversey, Inc. v Bridge Port Enterprises Limited, FA 1284837 (Nat. Arb. Forum Aug 12, 2009); see also Wells Fargo & Company v Bridge Port Enterprises Limited, FA 1271507 (Nat. Arb. Forum Aug. 10, 2009); see also Hershey Chocolate & Confectionery Corporation v Bridge Port Enterprises Limited, FA 1268733 (Nat. Arb. Forum Aug. 5, 2009); see also Intelius Inc. v Bridge Port Enterprises Limited, FA 1270254 (Nat. Arb. Forum July 23, 2009). The Panel finds this constitutes a pattern of bad faith registration and use of the domain name under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).
Respondent’s website resolves to a links page containing links that offer similar services as Complainant. Because these links are competing with Complainant’s services, the Panel finds that Respondent’s use of the website is a disrupting use. Such a use is an indication of bad faith pursuant to 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
The Panel also finds that Respondent is using the disputed domain name to attract users to its website for commercial gain. The Panel presumes that Respondent benefits through sponsored links or click-through fees from this display of links. This type of use for gain on behalf of the respondent is an indication of bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmipomorganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 11, 2010
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