Morgan Stanley v. LaPorte Holdings, Inc.
Claim
Number: FA0412000374608
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 LaPorte Holdings, Inc. (“Respondent”), 2202 S. Figueroa St., Suite
721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <moganstanley.com>, registered with Nameking.com,
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
6, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 8, 2004.
On
December 6, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <moganstanley.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, 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
December 9, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 29, 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@moganstanley.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 6, 2005, 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." 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 <moganstanley.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or
legitimate interests in the <moganstanley.com> domain name.
3. Respondent registered and used the <moganstanley.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an international leader in investment banking and a leading provider of
financial services and products.
Complainant has a presence in over 27 countries, including the United
States. Through a unique combination of
institutional and retail capabilities, Complainant offers a full range of
financial and investment services to its clients.
Complainant has
registered the MORGAN STANLEY mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,707,196 issued August 11, 1992).
Since 1996, Complainant
has owned and operated a website at the <morganstanley.com> domain name,
providing products and financial services to its customers over the Internet.
Respondent
registered the <moganstanley.com> domain name on November 18,
2003. Respondent’s domain name resolves
to a website that links to competing financial services websites.
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
established rights in the MORGAN STANLEY mark through registration with the
USPTO and continuous use of the mark in commerce. 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).
Respondent’s <moganstanley.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because
the domain name incorporates Complainant’s mark in its entirety and merely
deletes the letter “r” from the term “morgan.”
Such a minor change is not enough to negate a finding of confusing
similarity between Respondent’s domain name and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also State Farm Mut. Auto. Ins. Co.
v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding
that the domain name <statfarm.com> is confusingly similar to
Complainant’s STATE FARM mark); see also Marriott
Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that Respondent's <marrriott.com> domain name was
confusingly similar to Complainant's MARRIOTT mark because "Respondent's
typosquatting, by its definition, renders the domain name
confusingly similar to Complainant's mark").
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to overcome a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
Moreover, the
omission of the space between the terms “morgan” and “stanley” in Complainant’s
mark does not diminish the confusing similarity between Respondent’s domain
name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”);
see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because Respondent never submitted a response or provided the Panel with
evidence to suggest otherwise).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in connection
with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact
information for the disputed domain, one can infer that Respondent, Onlyne
Corporate Services11, is not commonly known by the name ‘welsfargo’ in any
derivation.”).
Moreover,
Respondent’s use of the <moganstanley.com> domain name, which is
confusingly similar to Complainant’s MORGAN STANLEY mark, to direct Internet
users to competing financial services websites is 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). See Glaxo
Group Ltd. v. Glenmore, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that Respondent was not using the domain name in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the trademark pursuant to
Policy ¶ 4(c)(iii) because Respondent used the
domain name to take advantage of Complainant's
mark by diverting Internet users to a competing commercial site); see also Ameritrade Holdings Corp.
v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services).
In addition, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s MORGAN STANLEY mark is evidence that Respondent lacks any rights
or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See LTD
Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding
that the <ltdcommadities.com>,
<ltdcommmodities.com> and <ltdcommodaties.com> disputed domain
names were typosquatted versions of Complainant's LTD COMMODITIES mark and
"Respondent's 'typosquatting' is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names"); see also IndyMac
Bank F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that Respondent lacked rights and
legitimate interests in the disputed domain names because it "engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter 'x' instead of the letter
'c'.").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the <moganstanley.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii) by registering a domain name which is
confusingly similar to Complainant’s famous mark and using it to divert
Internet users to a website that links to competing financial services. See Six
Continents Hotels, Inc. v. Asia Ventures,
D2003-0659 (WIPO Oct. 14, 2003) (finding that Respondent registered a domain
name primarily to disrupt the business of its competitor because it directed “its
web site to travel-related services in competition with the Complainant and is
deriving a financial benefit from such direction and redirection of users to
such sites, particularly, through banner advertisements, pop-up windows and its
affiliate relationships”);
see also Pitanguy v. Pitanguy Plastic Surgical Clinic, FA
205125 (Nat. Arb. Forum Dec. 8, 2003) (finding that Respondent
registered a domain name primarily to disrupt Complainant’s competing business
because Respondent had knowledge of Complainant and its mark at the time it
registered a domain name identical to Complainant’s mark).
Additionally,
the Panel finds that Respondent had actual or constructive knowledge of
Complainant’s MORGAN STANLEY mark when registering the <moganstanley.com>
domain name because Complainant had registered the mark with the USPTO. Moreover, the fact that Respondent uses the
domain name to divert Internet users to competing financial services websites
is further evidence that Respondent had actual or constructive knowledge of
Complainant’s mark when registering the disputed domain name. Therefore, Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
Furthermore,
Respondent uses the disputed domain name to divert Internet users to competing
financial services websites. The Panel
infers that Respondent receives click-through fees for redirecting Internet
users to these competing websites. Such
commercial use of the domain name is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that Respondent’s use of the <saflock.com> domain name to
offer goods competing with Complainant’s illustrates Respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that Respondent acted in bad faith by registering the <fossilwatch.com>
domain name and using it to sell various watch brands where Respondent was not
authorized to sell Complainant’s goods).
Moreover, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s famous mark is further evidence that Respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Zone
Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that
Respondent registered and used the <zonelarm.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii) because the
name was merely a typosquatted version of Complainant's ZONEALARM
mark. "Typosquatting, itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii)."); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting, in which Respondent has engaged, has been deemed behavior in bad
faith.").
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 <moganstanley.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated:
January 20, 2005
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