Morgan Stanley v. Henry Chan
Claim
Number: FA0403000244123
Complainant is Morgan Stanley (“Complainant”),
represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Henry Chan (“Respondent”), P.O. Box SS-6348/A12, Nassau, Bahamas.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <morganstanleyclientserve.com>, registered
with Iholdings.com, Inc. d/b/a Dotregistrar.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 (the "Forum")
electronically on March 8, 2004; the Forum received a hard copy of the
Complaint on March 10, 2004.
On
March 9, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <morganstanleyclientserve.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
March 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 1, 2004 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@morganstanleyclientserve.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
April 9, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
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. Respondent’s <morganstanleyclientserve.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 <morganstanleyclientserve.com> domain
name.
3. Respondent registered and used the <morganstanleyclientserve.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
The Morgan
Stanley Group, Inc. was founded in 1933 and has been an international leader in
investment banking and an innovator of financial services and products. Dean Witter, Discover & Co. (“Dean
Witter”) was founded in 1924 and has provided financial services and products
for individual investors. In 1997,
Morgan Stanley Group, Inc. merged with Dean Witter to form Morgan Stanley Dean
Witter & Co. In 2002, the company
changed its name to Morgan Stanley.
The MORGAN
STANLEY mark has been used by Complainant and it’s predecessors-in-interest
since at least as early as 1935.
Complainant registered the mark with the United States Patent and
Trademark Office (“USPTO”) on August 11, 1992 (Reg. No. 1,707,196). The mark is used in connection with “investment
banking services; financial services in the nature of underwriting,
distribution, and trading of securities; financial services in the nature of
merger, acquisition, restructuring, and other corporate finance activities;
stock brokerage and research services; investment management and advice; and
financial services in the nature of trading futures, options, foreign exchange,
and commodities, in class 36.”
Complainant
alleges that it owns the mark CLIENTSERV, through a subsidiary named “Dean
Witter Reynolds Inc.” Dean Witter
Reynolds Inc. registered the mark with the USPTO on February 22, 2000 (Reg. No.
2,322,252). The mark is used for
“computer services, namely, providing financial portfolio management services
to enrolled clients on a global computer network, in class 36.” Complainant has not provided evidence to
show that Dean Witter Reynolds Inc. is a subsidiary of Stanley Morgan.
Complainant also
owns the domain names <morganstanley.com> and
<morganstanleyclientserv.com>.
Respondent registered
the disputed domain name <morganstanleyclientserve.com> on
December 22, 2003. Respondent uses the
domain name to operate a website that provides links to third-party websites
that offer financial services such as credit card services, stock quotes, stock
portfolio services, and legal services relating to securities and investment
fraud.
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.
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 has
asserted that it owns the CLIENTSERV mark as a result of the mark’s
registration by Complainant’s subsidiary, Dean Witter Reynolds Inc. Complainant has not provided evidence to
show that Dean Witter Reynolds Inc. is, in fact, a subsidiary of Stanley
Morgan. Yet, Complainant has made the
assertion, which was certified by Complainant’s counsel to be complete and
accurate, and Respondent has failed to rebut this assertion. Thus, the Panel
accepts Complainant’s assertion as true. See 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.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint); see also Vert. 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).
Registration of
a mark with a governmental authority is sufficient to confer rights in a
complainant under Policy ¶ 4(a)(i). In
this case, consistent with Complainant’s assertions, Complainant has registered
the marks MORGAN STANLEY and CLIENTSERV with the USPTO. Therefore, Complainant has established
rights in the marks under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the 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
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 Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law.”).
A domain name
that incorporates a combination of a third-party’s marks has been found to be
identical or confusingly similar to the third-party’s marks under Policy ¶
4(a)(i). In this case, Respondent has
registered a domain name that includes both Complainant’s STANLEY MORGAN and
CLIENTSERV marks in their entirety. See Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or confusing
similarity for purposes of the Policy.”); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where respondent combined Complainant’s POKEMON and
PIKACHU marks to form the <pokemonpikachu.com> domain name); see also
G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept.
27, 2002) (holding that the addition of other well-known pharmaceutical drug
brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential to confuse”).
A domain name
that incorporates a third-party’s mark in its entirety, as seen above, but
merely adds a single letter to the domain name has also been found to be
confusingly similar to the third-party’s mark under Policy ¶ 4(a)(i). In this case, Respondent has merely appended
the letter “e” to the end of Complainant’s combined STANLEY MORGAN and
CLIENTSERV marks. Thus, the disputed
domain name is confusingly similar to Complainant’s marks. See Crédit Lyonnais v. Ass’n Etre Ensemble,
D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and
a hyphen does not affect the power of the mark in determining confusing
similarity); see also Int’l Data
Group, Inc. v. Maruyama & Co., Ltd.,
D2000-0420 (WIPO June 26, 2000) (finding that the domain name
<ecomputerland.com> is confusingly similar to Complainant’s mark,
COMPUTERLAND); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that <oicq.net> and <oicq.com> are confusingly
similar to Complainant’s mark, ICQ); see also 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).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
not responded to the Complaint and, therefore, the Panel finds that Respondent
lacks rights to and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights
or legitimate interests where Respondent fails to respond); see also Do the
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertion in this regard.”).
Respondent has
registered a domain name, which is confusingly similar to Complainant’s MORGAN
STANLEY and CLIENTSERV marks, to host a website that offers services that compete
with those offered by Complainant under its marks. Such use has consistently
been found not to be a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), nor is such use a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests in a domain
name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
Complainant has
asserted that Respondent is not commonly known by the disputed domain name <morganstanleyclientserve.com>. Respondent has failed to rebut this
assertion. Therefore, the Panel finds
that Respondent is not commonly known by the domain name under Policy ¶
4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Furthermore,
Complainant has not authorized Respondent to use its MORGAN STANLEY and
CLIENTSERV marks. See State Farm Mut.
Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000)
(“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”);
see also Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant; (2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent is
using a domain name, which is confusingly similar to Complainant’s MORGAN
STANLEY and CLIENTSERV marks, to host a website that offers services that
compete with those offered by Complainant under its marks, presumably for
commercial gain. Internet users are
likely to be confused as to the relationship between the content hosted at
Respondent’s website and Complainant’s business because the services offered by
Complainant and the services marketed by Respondent are nearly identical. The fact that Respondent uses a domain name
confusingly similar to Complainant’s marks creates even more confusion and
evidences Respondent’s intention to cause confusion with Complainant’s marks as
to the source of the services offered at its website. As a result, Respondent registered and used the disputed domain
name in bad faith under Policy ¶ 4(b)(iv) by intentionally attempting to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’ mark as to the source of its website.
See Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally
attempted to attract Internet users to his website for commercial gain by
creating a likelihood of confusion with Complainant’s mark and offering the
same services as Complainant via his website); see also Scholastic Inc. v. Applied Software
Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to
resolve to a website offering similar services as Complainant into the same
market).
Given the
long-standing use and fame of Complainant’s MORGAN STANLEY mark, it is likely
that Respondent had knowledge of Complainant’s rights in the mark prior to
Respondent’s registration of the disputed domain name. The fact that the mark was registered with
the USPTO provided constructive notice to Respondent of Complainant’s rights in
the mark. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)
(finding that the fame of the YAHOO! mark negated any plausible explanation for
Respondent’s registration of the <yahooventures.com> domain name); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <morganstanleyclientserve.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
April 23, 2004
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