Morgan Stanley v. Blog Network
International
Claim Number: FA0509000564204
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 Blog Network International (“Respondent”),
1 Cloudcrest, Aliso Viejo, CA 92656.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <morganstanleyblog.com>, registered with Go
Daddy Software, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 21, 2005.
On
September 20, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <morganstanleyblog.com> domain name is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
September 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of August 12, 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@morganstanleyblog.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 18, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <morganstanleyblog.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or
legitimate interests in the <morganstanleyblog.com> domain name.
3. Respondent registered and used the <morganstanleyblog.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Morgan Stanley, is an international leader in investment banking and an
innovator in financial services and products.
In connection with these products and services, Complainant has
registered numerous marks with the United States Patent and Trademark Office
(“USPTO”), including the MORGAN STANLEY mark (Reg. No. 1,707,196 issued August
11, 1992).
Respondent
registered the <morganstanleyblog.com> domain name on June 6,
2005. The domain name resolves to a
parking page, which provides Internet users with an opportunity to purchase
domain names as well as commercial links to various unrelated 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. 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.”).
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. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Complainant
contends that Respondent’s <morganstanleyblog.com> domain name is
confusingly similar to Complainant’s MORGAN STANLEY mark. The disputed domain name features
Complainant’s entire MORGAN STANLEY mark and adds the generic term “blog,”
which is a widely recognized abbreviation for the term “weblog.” The Panel finds that the addition of a
generic term is insufficient to differentiate the <morganstanleyblog.com>
domain name from Complainant’s registered mark pursuant to Policy ¶
4(a)(i). See Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged
that Respondent does not have rights or legitimate interests in the <morganstanleyblog.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel infers that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
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 Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent’s <morganstanleyblog.com>
domain name resolves to a website that allows Internet users to purchase domain
names and additionally provides links to various unrelated commercial websites
from which Respondent presumably receives referral fees. The Panel finds that such use is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, no
affirmative evidence has been set forth showing that
Respondent is commonly known by the <morganstanleyblog.com>
domain name. As a result, Respondent
has failed to show evidence of rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Forum Sept. 25, 2003) (finding that without demonstrable evidence to support
the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <morganstanleyblog.com> domain name
to operate a website that provides Internet users with the opportunity to
purchase domain names as well as providing various unrelated commercial links
from which Respondent presumably receives referral fees. The Panel finds that Internet users may
become confused as to the affiliation with or the sponsorship of the resulting
website. Such diversionary use for
Respondent’s own commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Bank of Am. Corp. v. Out Island Props.,
Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the
disputed domain names contain entire versions of Complainant’s marks and are
used for something completely unrelated to their descriptive quality, a
consumer searching for Complainant would become confused as to Complainant’s
affiliation with the resulting search engine website” in holding that the
domain names were registered and used in bad faith pursuant to Policy ¶
4(b)(iv)).
Furthermore,
Respondent registered the <morganstanleyblog.com> domain name with
constructive knowledge of Complainant’s rights in the MORGAN STANLEY mark. Complainant’s registration of the MORGAN
STANLEY mark with the USPTO confers upon Respondent constructive knowledge of
Complainant’s rights in the mark. See
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.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072). The Panel finds that registration of a confusingly similar domain
name with constructive knowledge of Complainant’s rights is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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).
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 <morganstanleyblog.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
October 28, 2005
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