Morgan Stanley v. Unasi Management Inc.
Claim
Number: FA0505000471488
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 Unasi Management Inc. (“Respondent”), Galerias Alvear, Via
Argentina 2, Oficina #3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <moranstanley.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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 5, 2005.
On
May 5, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the National Arbitration Forum that the domain name <moranstanley.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
May 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 2005 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@moranstanley.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
June 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <moranstanley.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or
legitimate interests in the <moranstanley.com> domain name.
3. Respondent registered and used the <moranstanley.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Morgan Stanley, is in the investment banking
business and has provided financial services and products since 1933. In 1997, Complainant merged with Dean
Witter, Discover & Co. to form Morgan Stanley Dean Witter & Co. In 2002, this company changed its name to
Morgan Stanley.
Complainant holds numerous registrations with the United States Patent
and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (including Reg. No.
1,707,196 issued August 11, 1992 and Reg. No. 2,729,993 issued June 24, 2003)
and other related marks. Furthermore,
Complainant and its predecessors-in-interest have used the MORGAN STANLEY mark
since at least as early as 1935.
Additionally, Complainant owns the registration for the
<morganstanley.com> domain name, as well as numerous other domain names
that incorporate variations of Complainant’s MORGAN STANLEY mark.
Respondent registered the <moranstanley.com> domain name on September 30, 2004. Respondent is using the disputed domain name
to divert Internet users to a website that features a generic search engine and
displays links to various third-party websites that offer products and services
that compete with Complainant.
Presumably, Respondent earns compensation from click-through fees by
diverting Internet users to third-party websites via the links displayed on
Respondent’s website.
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 presumptive rights in the MORGAN STANLEY mark through registration
with the USPTO. Respondent has failed
to respond to the Complainant and has, therefore, failed to dispute
Complainant’s prima facie case of rights. Therefore, the Panel determines that Complainant has established
rights in the MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). 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).
The <moranstanley.com>
domain name is comprised of a simple misspelling of Complainant’s MORGAN
STANLEY mark in which the letter “g” is omitted as well as the addition of the
generic top-level domain (gTLD) “.com” and the omission of the space between
the words in Complainant’s mark.
Numerous panels have held that such small changes are insignificant in
determining confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s registered mark. See Compaq Info. Techs. Group,
L.P. v. Seocho, FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark); see also Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name
registrants"); see also Tech.
Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding
that the domain name <radioshack.net> is identical to the complainant’s
RADIO SHACK mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent’s
failure in this instance to submit a response to the allegations of the
Complaint entitles the Panel to accept all reasonable allegations and
inferences in the Complaint as true unless clearly contradicted by the
evidence. 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 Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a response a panel is free to make inferences from the very failure
to respond and assign greater weight to certain circumstances than it might
otherwise do).
Complainant
asserts that Respondent has no rights or legitimate interests in the <moranstanley.com>
domain name that contains a confusingly similar variation of Complainant’s
MORGAN STANLEY mark. Complainant has
made a prima facie case in support of
its allegations, which shifts the burden to Respondent to make a showing that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). However, Respondent has failed to respond to
Complainant’s allegations and to provide evidence of rights or legitimate
interests. Respondent has, therefore,
failed to meet its burden and the Panel concludes that Respondent lacks rights
and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that, once a complainant asserts that
a respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to that respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere
assertion by a complainant that a respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to that respondent to
demonstrate that such rights or legitimate interests do exist); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
Complainant asserts
that the <moranstanley.com> domain name diverts Internet users to
a website that displays links to third-party websites that offer financial
services that compete with Complainant.
Furthermore, the Panel infers that Respondent receives click-through
fees for linking Internet users to third-party websites via Respondent’s
website. In light of these
circumstances, the Panel finds that Respondent is using a domain name that is
confusingly similar to Complainant’s registered MORGAN STANLEY mark to attract
Internet users searching for Complainant’s financial products and services to
Respondent’s website, where Respondent earns click-through fees for linking
these diverted users to third-party websites.
It is well-established precedent under the Policy that this type of
diversionary use, presumably for the purpose of benefiting from click-through
compensation, 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) and, therefore, does not bestow rights
and legitimate interests upon Respondent under Policy ¶ 4(a)(ii). See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to redirect Internet users to websites
unrelated to the complainant’s mark, websites where the respondent presumably
receives a referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Disney Enters.,
Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
the respondent’s diversionary use of the complainant’s mark to attract Internet
users to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names); see also
Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that the respondent’s use of the disputed domain
name to redirect Internet users to commercial websites, unrelated to the
complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name).
Complainant
claims that Respondent is not commonly known by the <moranstanley.com>
domain name. Furthermore, Complainant
contends that Respondent is not a licensee of Complainant nor is Respondent
authorized in any way to use Complainant’s MORGAN STANLEY mark. Respondent has not filed a response and has
not, therefore, provided the Panel with any evidence to rebut Complainant’s
assertion. Therefore, the Panel finds
that Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the complainant’s
rights in the mark precede the respondent’s registration; (3) the respondent is
not commonly known by the domain name in question).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <moranstanley.com> domain name to profit from consumer
confusion by intentionally attracting Internet users searching for
Complainant’s MORGAN STANLEY products and services. The Panel finds that Respondent profits from these intentional
diversions through click-through fees earned by diverting Internet users to the
third-party websites linked through Respondent’s website. Therefore, the Panel determines that
Respondent’s attempts to divert Internet users for commercial gain by
attracting them to Respondent’s website through a likelihood of confusion with
Complainant’s mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of
the infringing domain name to intentionally attempt to attract Internet users
to its fraudulent website by using the complainant’s famous marks and
likeness); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if the respondent profits from its diversionary
use of the complainant's mark when the domain name resolves to commercial
websites and the respondent fails to contest the complaint, it may be concluded
that the respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support its finding of bad faith
registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent is
engaging in the practice of “typosquatting” by taking advantage of a potential
typographical error made by Internauts intending to reach Complainant’s website
at the <morganstanley.com> domain name who inadvertently omit the letter
“g.” Under the Policy, typosquatting is
itself evidence of bad faith registration and use of the disputed domain name
and the Panel finds no reason to distinguish Respondent’s use of the practice
in this instance. See Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also Zone Labs, Inc. v.
Zuccarini, FA 190613 (Nat Arb. Forum Oct. 15, 2003) (finding that the
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 the complainant’s ZONEALARM mark); 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 and that this practice “has been deemed behavior in
bad faith”).
The Panel finds
that Complainant has satisfied 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 <moranstanley.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 20, 2005
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