Morgan Stanley v. Buy This Domain a/k/a
Domains for Sale Inc.
Claim
Number: FA0306000165134
Complainant is Morgan Stanley, New York, NY
(“Complainant”) represented by Baila H.
Celedonia of Cowan, Liebowitz & Latman PC. Respondent is Buy This Domain a/k/a Domains for Sale Inc., Bronx, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <deanwitters.com>, registered with Enom,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 24, 2003; the Forum received a hard copy of the
Complaint on July 17, 2003.
On
July 30, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name
<deanwitters.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. verified that
Respondent is bound by the Enom, 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
July 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 19, 2003, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@deanwitters.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 27, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain name registered by Respondent,
<deanwitters.com>, is confusingly similar to Complainant’s DEAN
WITTER family of marks.
2. Respondent has no rights to or legitimate
interests in the <deanwitters.com> domain name.
3. Respondent registered and used the <deanwitters.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Morgan Stanley, is the holder of the DEAN WITTER family of marks. Complainant holds United States Patent and
Trademark Office Registration No. 1,425,933 for the DEAN WITTER mark
(registered on the Principle Registry on Jan. 20, 1987) and Registration No.
2,522,916 for the MORGAN STANLEY DEAN WITTER mark (registered on the Principle
Registry on Dec. 25, 2001), as well as numerous other registrations and pending
applications for marks containing the DEAN WITTER mark and similar
registrations and applications outside the United States. In addition, the DEAN WITTER family of marks
has been developed and used by Complainant since at least as early as April
1924.
Complainant
helped shape the financial services industry in the United States and
throughout the world. Founded in 1924,
Dean Witter has provided services and products for individual investors. In 1997, the Morgan Stanley Group, Inc. and
Dean Witter, Discover & Co. (“Dean Witter”) merged to form Morgan Stanley
Dean Witter & Co., which shortened its name to Morgan Stanley in 2002.
Respondent
registered the <deanwitters.com> domain name May 2, 2003. Respondent is not a licensee of Complainant
and has not ever been authorized by Complainant to use the DEAN WITTER family
of marks or to register the <deanwitters.com> domain name.
The website
formerly associated with the <deanwitters.com> domain name
directed Internet traffic to the website located at the
<abortionismurder.org> domain name.
The website associated with the <abortionismurder.org> domain name
displays graphic images and videos of aborted fetuses, as well as anti-abortion
text. As of June 25, 2003, Respondent
posted an offer to sell the <deanwitters.com> domain name for
$985.
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 will draw such inferences as
the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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
established in this proceeding that it has rights in the DEAN WITTER family of
marks through registration on the Principal Register of the United States
Patent and Trademark Office, as well as through continuous use of the DEAN
WITTER family of marks in commerce since 1924.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. Respondent
has the burden of refuting this assumption); see also Fishtech v. Rossiter, FA 92976 (Nat.
Arb. Forum Mar. 10, 2000) (finding Complainant has common law rights in the
mark FISHTECH, which it has used since 1982).
The domain name
registered by Respondent, <deanwitters.com>, is confusingly
similar to Complainant’s DEAN WITTER mark.
Respondent adds the letter “s” and the top-level domain “.com” to
Complainant’s entire DEAN WITTER mark.
Such minor additions are not sufficient to create a domain name that
differs from Complainant’s DEAN WITTER mark under Policy ¶ 4(a)(i). See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb.
Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to Complainant’s
“National Geographic” mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is identical
or confusingly similar).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant
established in this proceeding that it has rights in the mark contained in its
entirety in the domain name that Respondent registered. Complainant asserts that Respondent has no
such rights. Respondent did not rebut Complainant’s allegations and did not
file a Response. Therefore, Respondent
failed to show that it has rights and legitimate interest in the <deanwitters.com>
domain name. Furthermore, when
Respondent does not challenge Complainant’s allegations, the Panel accepts as
true all reasonable assertions set forth in the Complaint. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Vertical
Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Nothing in the
record indicates that Respondent is commonly known by the <deanwitters.com>
domain name. In addition, Respondent
has not been licensed or authorized by Complainant to use the DEAN WITTER
family of marks or to register the <deanwitters.com> domain
name. Since the Panel has no evidence
to the contrary, the Panel reasonably infers that Policy 4(c)(ii) does not
apply to Respondent. See RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy
¶ 4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Moreover,
Respondent tarnished Complainant’s image by using the <deanwitters.com>
domain name to redirect unsuspecting Internet users to a politically charged
website that features graphic images of aborted fetuses and anti-abortion
language. Respondent also offered the <deanwitters.com> domain name
for sale. Thus, the Panel finds that
Respondent is not using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Dev. Co. v.
Domains For Sale, Inc., FA 105211 (Nat.
Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar
domain name to an “Abortion is Murder” website Respondent has not demonstrated
a right or legitimate interest in the disputed domain name); see also
Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant urges that Respondent registered and used the domain name
in bad faith. As of June 25, 2003, Respondent was offering the <deanwitters.com> domain name for sale for $985., an
amount that exceeds reasonable out-of-pocket expenses. Therefore, the Panel concludes that
Respondent’s intent to sell the disputed domain name for an amount in excess of
Respondent’s out-of-pocket expenses is evidence that Respondent registered and
is using the disputed domain name in bad faith pursuant to Policy ¶
4(b)(i). See World Wrestling Fed’n Entmt., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the
domain name in bad faith because he offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale).
Furthermore,
prior to offering the <deanwitters.com> domain name for sale,
Respondent used the disputed domain name to divert Internet traffic to a
website associated with the <abortionismurder.org> domain name. Respondent’s use of the Complainant’s mark
in this manner was calculated to affect the goodwill associated with
Complainant’s DEAN WITTER family of marks without any permission to do. Respondent thrust Complainant into a debate
that had nothing to do with Complainant’s commercial area. Respondent redirected Internet users seeking
to contact Complainant to a website that advances Respondent’s view of an issue
that has highly polarized society.
Respondent also used Complainant’s mark to display graphic photographs
of aborted fetuses. Using Complainant’s mark in this manner constitutes bad
faith. See Journal Gazette Co. v.
Domain For Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9,
2002) (finding bad faith because “Respondent chose the domain name to increase
the traffic flowing to the <abortionismurder.org> and
<thetruthpage.com> websites”); see also Rittenhouse Dev. Co. v. Domains For Sale,
Inc., FA 105211 (Nat. Arb. Forum Apr. 8,
2002) (finding that “when a party registers and uses a domain name that
incorporates a well-known mark and connects the domain name with a website that
depicts offensive images,” the party has registered and used the disputed
domain name in bad faith).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <deanwitters.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 9, 2003.
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page