Morgan Stanley v. hashimoto hideaki
Claim Number: FA1304001497232
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is hashimoto hideaki (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morganstanleyfraudinfocenter.com>, registered with ENOM646, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2013; the National Arbitration Forum received payment on April 29, 2013.
On April 30, 2013, ENOM646, INC. confirmed by e-mail to the National Arbitration Forum that the <morganstanleyfraudinfocenter.com> domain name is registered with ENOM646, INC. and that Respondent is the current registrant of the name. ENOM646, INC. has verified that Respondent is bound by the ENOM646, INC. 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 May 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2013 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@morganstanleyfraudinfocenter.com. Also on May 2, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Morgan Stanley, offers a full range of financial, investment, and wealth management services to a broad spectrum of clients through a unique combination of institutional and retail capabilities. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (Reg. No. 1,707,196, registered August 11, 1992). Complainant also owns trademark registrations with the Japan Patent Office (“JPO”) for the MORGAN STANLEY mark (e.g., Reg. No. 4,629,128, registered December 13, 2002).
Respondent’s domain name features Complainant’s MORGAN STANLEY mark in its entirety and merely adds the descriptive phrase “fraud info center.” The addition of the generic top-level domain (“gTLD”) “.com” and elimination of spaces also are irrelevant in distinguishing the disputed domain name from Complainant’s mark.
Respondent should be considered as having no rights or legitimate interests in respect of the domain name. Respondent is not commonly known under the name MORGAN STANLEY or <morganstanleyfraudinfocenter.com>. Respondent’s at-issue domain name resolves to a website containing advertisements for and hyperlinks to purported credit card and financial services that compete with those financial services offered by Complainant.
Respondent’s domain name should be considered as having been registered and used in bad faith. Respondent’s domain name diverts Internet users seeking Complainant’s services to the services of Complainant’s competitors thereby creating a disruption of Complainant’s business. Respondent is presumed to have had constructive knowledge of Complainant’s marks at the time it registered the confusingly similar domain name. Respondent was aware of Complainant’s MORGAN STANLEY marks when it chose and registered its domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in MORGAN STANLEY.
Respondent is not affiliated with Complainant and had not been authorized to use the MORGAN STANLEY mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in MORGAN STANLEY.
The <morganstanleyfraudinfocenter.com> domain name is used by Respondent to address a website containing advertisements for, and hyperlinks to, purported credit card and financial services that compete with those financial services 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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the MORGAN STANLEY mark with multiple international trademark authorities sufficienty establishes its rights in a mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <morganstanleyfraudinfocenter.com> domain name contains Complainant’s MORGAN STANLEY mark in its entirety less its inter-term space, adds the descriptive phrase “fraud info center,” and appends the top level domain name “.com” thereto. Respondent’s addition of a descriptive phrase to Complainant’s trademark is inconsequential under a Policy ¶ 4(a)(i) analysis. Likewise the removal of the space between the terms in Complainant mark and addition of the top level domain name do not distinguish the at-issue domain name from the Complainant’s trademark for the purposes of the Policy. Therefore the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); 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)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “hashimoto hideaki” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name addresses a website containing advertisements for, and hyperlinks to, purported credit card and financial services that compete with those financial services offered by Complainant. For example, Respondent’s <morganstanleyfraudinfocenter.com> website states “Point and choose the card loan MOBIT it?” Therefore, the Panel concludes that Respondent is neither making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b)(iv) circumstances as well as other circumstance are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s at-issue domain name diverts Internet users seeking Complainant’s services to the services of Complainant’s competitors. In so doing Respondent disrupts Complainant’s business. As mentioned above, the domain name addresses a website containing advertisements for, and hyperlinks to, competing credit card and financial services. Respondent’s use of the <morganstanleyfraudinfocenter.com> domain name in this manner demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Finally, Complainant’s MORGAN STANLEY mark is well-known and registered in many countries throughout the world, including the United States and Japan. In light of such notoriety and Respondent’s foul use of the confusingly similar <morganstanleyfraudinfocenter.com> domain name there can be no doubt that Respondent was well aware of Complainant’s MORGAN STANLEY mark when it chose and registered the confusingly similar name. Registering a domain name with knowledge of another’s rights therein is indicative of bad faith under Policy ¶4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyfraudinfocenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 3, 2013
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