Morgan Stanley v. Above.com Domain Privacy
Claim Number: FA1101001366174
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <organstanleyclientserv.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2011; the National Arbitration Forum received payment on January 5, 2011.
On January 5, 2011, Above.com confirmed by e-mail to the National Arbitration Forum that the <organstanleyclientserv.com> domain name is registered with Above.com and that Respondent is the current registrant of the name. Above.com has verified that Respondent is bound by the Above.com 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 January 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2011 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@organstanleyclientserv.com. Also on January 6, 2011, 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 January 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 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 <organstanleyclientserv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks.
2. Respondent does not have any rights or legitimate interests in the <organstanleyclientserv.com> domain name.
3. Respondent registered and used the <organstanleyclientserv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is owner of the MORGAN STANLEY and CLIENT SERV marks. Complainant has used its MORGAN STANLEY mark since 1935 for the promotion of its financial, investment, and wealth management services. Complainant holds numerous trademark registrations for its MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,707,196 issued Aug. 11, 1992) and holds a trademark registration with the USPTO for its CLIENTSERV mark (Reg. No. 2,322,252 issued Feb. 22, 2000).
Respondent, Above.com Domain Privacy, registered the disputed domain name on December 22, 2010. The disputed domain name resolves to directory website featuring links to third-party businesses which offer financial services in direct competition 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.
Complainant maintains that it has established rights in its MORGAN STANLEY and CLIENTSERV marks. Previous panels have found that rights in a mark can be established through federal trademark registration. 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant is not required to have registered its mark within the country of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see 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 holds trademark registration with the USPTO for its MORGAN STANLEY mark (e.g. Reg. No. 1,707,196 issued Aug. 11, 1992) and for its CLIENTSERV mark (e.g. Reg. No. 2,322,252 issued Feb. 22, 2000). Therefore, the Panel concludes that Complainant has established rights in both marks through its trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <organstanleyclientserv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTSERV marks. The disputed domain name incorporates the CLIENTSERV mark in its entirety and differs from the MORGAN STANLEY mark only through the deletion of the space between the terms of the mark and the omission of the first letter “m.” The disputed domain name also adds a generic top-level domain (“gTLD”) “.com.” to the marks. The Panel concludes that the combination of two of Complainant’s marks fails to adequately differentiate the disputed domain name and Complainant’s marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). The Panel finds that the deletion of a space and addition of a gTLD fails to properly 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). The Panel also finds that the deletion of a single letter is not enough to distinguish the disputed domain name from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel concludes that Respondent’s <organstanleyclientserv.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY and CLIENTERV marks.
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the <organstanleyclientserv.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that “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.” Here, Complainant has established a prima facie showing in support of its allegations. Given Respondent’s failure to submit a Response to the Complaint, the Panel is allowed to assume Respondent lacks rights and legitimate interests. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel chooses to examine the record to determine whether Respondent has rights or legitimate interests according to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <organstanleyclientserv.com> domain name. The WHOIS information supports this claim as it identifies Respondent as “Above.com Domain Privacy,” which is not similar to the disputed domain name. Complainant asserts that it has not licensed or authorized Respondent to register or use its MORGAN STANLEY or CLIENTSERV marks with the disputed domain name. Looking at the evidence, the Panel determines that Respondent is not commonly known by the disputed domain name 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 known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s uses the disputed domain name to operate a directory website which features third-party links to websites and businesses in direct competition with Complainant’s financial services. Respondent likely receives click-through fees from these links. The Panel concludes that Respondent’s use of the confusingly similar disputed domain name to divert Internet users to Complainant’s competitors is 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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 also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <organstanleyclientserv.com> domain name resolves to a website containing hyperlinks to Complainant’s competitors in the financial services industry. Such a use disrupts Complainant’s business as Internet users interested in Complainant’s financial services may purchase similar services from Complainant’s competitors due to Respondent’s use of the confusingly similar disputed domain name. Thus, the Panel finds that Respondent’s use of the <organstanleyclientserv.com> domain name constitutes bad faith registration and use under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent likely receives click-through fees from the aforementioned hyperlinks found on Respondent’s website. Internet users may become confused as to Complainant’s affiliation with the <organstanleyclientserv.com> domain name and resolving website. Through the receipt of pay-per-click fees, Respondent is likely profiting from this confusion. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under 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 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 <organstanleyclientserv.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 14, 2011
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