Morgan Stanley v. Nicenic.com,Inc.
Claim Number: FA1101001368093
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Nicenic.com,Inc. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ms-ae-fund.com>, registered with Dynadot.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2011; the National Arbitration Forum received payment on January 18, 2011.
On February 3, 2011, Dynadot confirmed by e-mail to the National Arbitration Forum that the <ms-ae-fund.com> domain name is registered with Dynadot and that Respondent is the current registrant of the name. Dynadot has verified that Respondent is bound by the Dynadot 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 February 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 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@ms-ae-fund.com. Also on February 7, 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 March 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <ms-ae-fund.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <ms-ae-fund.com> domain name.
3. Respondent registered and used the <ms-ae-fund.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is the owner of the MORGAN STANLEY mark which it uses in connection with its full range of financial investment and wealth management services. Complainant has over 600 offices in 37 countries and offers global access to financial markets and advice. Complainant owns trademark registrations for the MORGAN STANLEY mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,707,196 issued August 11, 1992) and China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 775116 issued January 7, 1995).
Respondent, Nicenic.com,Inc., registered the <ms-ae-fund.com> domain name on September 17, 2010. The disputed domain name resolves to a website which attempts to impersonate Complainant by displaying Complainant’s MORGAN STANLEY mark and a map of Complainant’s global offices and also plagiarizes content from Complainant’s legitimate websites. Additionally, the resolving website contains links to third-party businesses that offer financial services that compete with those offered by Complainant.
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 asserts rights in its MORGAN STANLEY mark based on its registration of the mark with both the USPTO (e.g., Reg. No. 1,707,196 issued August 11, 1992) and China’s SIPO (e.g., Reg. No. 775116 issued January 7, 1995). The Panel finds that trademark registrations with governmental trademark authorities establish Complainant’s rights in its MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant alleges that Respondent’s <ms-ae-fund.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. Complainant asserts that the letters “ms” are a common acronym for Complainant’s MORGAN STANLEY mark. Previous panels have concluded that where a disputed domain name contains a common abbreviation of a mark, confusing similarity exists. See Morgan Stanley Smith Barney Holdings LLC v. ms-sb ms, FA 1299536 (Nat. Arb. Forum Feb. 16, 2010) (concluding that the <ms-sb.com> domain name was confusingly similar to Complainant’s MORGAN STANLEY mark) ; see also Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding confusing similarity where “[d]istinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name.”). The disputed domain name also incorporates the letters “ae,” which Complainant indicates stands for “active extension,” a type of investment fund offered by Complainant, as well as the descriptive term “fund.” The Panel finds that these descriptive additions are not sufficient to distinguish the disputed domain name from Complainant’s mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The disputed domain name also adds hyphens and the generic top-level domain (“gTLD”) “.com,” which the Panel finds are not distinguishing additions. See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, according to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <ms-ae-fund.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant is first required to make a prima facie case in support of its contention that Respondent lacks rights and legitimate interests in the disputed domain name. 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.”). Based on the arguments contained in the Complaint, the Panel finds that Complainant has satisfactorily met its burden. The Respondent did not submit any Response to these proceedings, which the Panel finds amounts to a failure by Respondent to uphold its burden. The Panel also notes this failure allows the inference that Respondent does lack rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, this Panel elects to review the record in light of the factors contained in Policy ¶ 4(c) to make a complete determination as to Respondent’s rights or legitimate interests in the <ms-ae-fund.com> domain name.
Complainant asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use Complainant’s MORGAN STANLEY mark in the <ms-ae-fund.com> domain name. Complainant also states that neither its MORGAN STANLEY mark nor the disputed domain name are part of Respondent’s name, which, according to the WHOIS information, is “Nicenic.com,Inc.” Upon examination of the record, the Panel has not found any evidence to indicate that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); 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 argues that the disputed domain name resolves to a website containing links to third-party businesses that offer financial services that compete with those offered by Complainant under its MORGAN STANLEY mark. The Panel finds that use of a confusingly similar disputed domain name to provide links to competing third-party websites, from which Respondent likely profits, is not a use in connection with 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 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Complainant states that Respondent attempts to impersonate Complainant by displaying Complainant’s MORGAN STANLEY mark, a map of Complainant’s global offices, and plagiarized content from Complainant’s actual website. The Panel finds that that Respondent is attempting to pass itself off as Complainant and therefore lacks rights and legitimate interests in the <ms-ae-fund.com> domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the disputed domain name to redirect Internet users to competing third-party websites via the displayed pay-per-click links constitutes a disruption of Complainant’s business. Therefore, the Panel finds actions constitute 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).”).
Complainant indicates that the content on Respondent’s resolving website falsely suggests that the website is maintained by, sponsored by, or affiliated with Complainant. The Panel presumes that Respondent does in some way profit from the third-party links displayed on the website resolving from the <ms-ae-fund.com> domain name. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
As established previously, Respondent has included content on its resolving website that is being used by Respondent in an attempt to pass itself off as Complainant. The Panel finds this to be further evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds that 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 <ms-ae-fund.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 5, 2011
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