ELIGIBILITY
REQUIREMENTS DISPUTE RESOLUTION POLICY
DECISION
Morgan Stanley v Titan Net c/o Titan
Claim Number: FA0509000566644
PARTIES
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 Titan Net, c/o Titan (“Respondent”), Net, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, Kenya 30100.
REGISTRAR AND DISPUTED REGISTERED NAMES
The Registered Names at issue are <morganstanleydeanwitter.name>, <morganstanleyfinancialadvisor.name> and <morganstanleyasia.name>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 21, 2005; the Forum received a hard copy of the Complaint on September 23, 2005.
On September 23, 2005, Intercosmos
Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the Forum that the Registered Names <morganstanleydeanwitter.name>, <morganstanleyfinancialadvisor.name> and <morganstanleyasia.name> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the Registered Name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve registered name disputes brought by third parties in accordance with the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).
On September 29, 2005 a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 19, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”)
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 October 26, 2005, pursuant to ERDRP Rule 6(b), the Forum appointed Bruce E. Meyerson as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibilities under Paragraph 2(a) of the ERDRP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ERDRP, ERDRP Rules, the Forum’s ERDRP 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 Panel issue a Defensive Registration for the <morganstanleydeanwitter.name> Registered Name in accordance with ERDRP Policy 5(f)(i)(C) (“Phase I”). Additionally, Complainant requests that the <morganstanleyfinancialadvisor.name> and <morganstanleyasia.name> Registered Names be defensively registered under paragraph 2(c) (“Phase II”) of the Eligibility Requirements for Defensive Registrations of the .NAME Restrictions.
A. Complainant
Complainant asserts that Respondent
registered the <morganstanleydeanwitter.name>, <morganstanleyfinancialadvisor.name>
and <morganstanleyasia.name> Registered Names in violation of
the Eligibility Requirements for the following reasons:
1. Respondent’s legal name does not include “Morgan Stanley Dean Witter,” “Morgan Stanley Financial Advisor” or “Morgan Stanley Asia.”
2. Respondent does not have any trademark or service mark rights in fictional characters named “Morgan Stanley Dean Witter,” “Morgan Stanley Financial Advisor” or “Morgan Stanley Asia.”
3. Respondent as an individual has not been commonly known by the name “Morgan Stanley Dean Witter,” “Morgan Stanley Financial Advisor” or “Morgan Stanley Asia.”
Complainant asserts that the <morganstanleydeanwitter.name> Registered Name is identical to the textual or word elements of Complainant’s MORGAN STANLEY DEAN WITTER mark and therefore has established rights in the Registered Name <morganstanleydeanwitter.name> under Phase I.
B. Respondent
No Response was received.
Complainant instituted this action as Morgan Stanley pursuant to Policy ¶ 4(b) of the ERDRP.
Complainant owns numerous registrations for its MORGAN STANLEY DEAN WITTER mark including other variations of the mark with a variety of worldwide governmental authorities including the European Union, Japan and the United States (e.g., United States Patent and Trademark Office Reg. No. 2,522,916, issued December 25, 2001).
Respondent registered the <morganstanleydeanwitter.name> and <morganstanleyfinancialadvisor.name> Registered Names on August 18, 2005 and the <morganstanleyasia.name> Registered Name on August 22, 2005. Respondent has not presented any evidence to show that its legal name includes any variation of “Morgan Stanley Dean Witter,” “Morgan Stanley Financial Advisor” or “Morgan Stanley Asia.” or that it is commonly known by any of these names.
Paragraph 15(a) of the ERDRP 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 the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a), and 15(a) of the ERDRP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the ERDRP Rules.
Paragraph 4(b) of the ERDRP requires that the Complainant prove each of the following elements in order to establish that the Registered Name was registered in violation of the Eligibility Requirements and obtain an order that a Registered Name should be cancelled:
(1) the name corresponding to the Registered Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and
(3) the Respondent has not been commonly known by the name corresponding with the Registered Name.
There is no evidence that
Respondent’s legal name is “Morgan Stanley Dean Witter,” “Morgan Stanley
Financial Advisor” or “Morgan Stanley Asia.”
The evidence in the record reveals that Respondent’s legal name is Titan
Net or Titan. Therefore, Respondent’s
registration of the <morganstanleydeanwitter.name> and <morganstanleyfinancialadvisor.name>
Registered Name does not meet this Eligibility Requirement, and ERDRP
Policy paragraph 4(b)(i) has been satisfied.
Name of
Fictional Character
Respondent has not come forward with any evidence establishing Respondent’s ownership of any trademark or service mark rights for a character by the name of “Morgan Stanley Dean Witter,” “Morgan Stanley Financial Advisor” or “Morgan Stanley Asia.” Therefore, Respondent does not meet the requirements of paragraph 4(b)(ii) of the ERDRP.
Commonly
Known As
There is no evidence that Respondent is commonly known by the names “Morgan Stanley Dean Witter,” “Morgan Stanley Financial Advisor” or “Morgan Stanley Asia.” Therefore, Respondent’s Registered Names, <morganstanleydeanwitter.name>, <morganstanleyfinancialadvisor.name> and <morganstanleyasia.name>, do not meet the requirements of paragraph 4(b)(iii), and the ERDRP Policy has been satisfied.
Complainant’s
Eligibility for Defensive Registrations
Phase
I Defensive Registration
Complainant requests that the Panel
issue a Defensive Registration for the <morganstanleydeanwitter.name>
Registered Name pursuant to ERDRP 5(f)(i)(C).
Therefore, Complainant must meet the Common Defensive Registration
Requirements.
Paragraph 2(b) of the Eligibility
Requirements for Phase I Defensive Registrations of the .NAME Restrictions
requires Complainant to prove that the name is identical to the textual or word
elements of Complainant’s trademark or service mark. See Morgan Stanley v. Bailey Bross, FA 304684 (Nat. Arb.
Forum Sept. 23, 2004). Complainant has
provided the Panel with evidence of its registrations of its MORGAN STANLEY
DEAN WITTER mark in the United States and various other countries, including
Japan and the European Union, that were issued prior to Respondent’s
registration of the Registered Names on August 18, 2005. The MORGAN STANLEY DEAN WITTER mark
is identical to the <morganstanleydeanwitter.name> Registered Name
and Complainant has thus satisfied the requirements of paragraph 5(f)(i)(C) of
the ERDRP for Phase I Defensive Registration.
Phase II Defensive Registration
Complaint also requests that the
Panel issue a Phase II Defensive Registration for the <morganstanleyfinancialadvisor.name>
and <morganstanleyasia.name> Registered Names under Paragraph
2(c) of the ERDRP of the .NAME Restrictions.
Pursuant to Paragraph 2(c), Phase II Defensive Registrations may be
requested by any entity for any string or combination of strings. See Proposed Unsponsored TLD Agreement:
Appendix L (.name), ¶ 2(c) Aug. 8, 2003.
Complainant has met this requirement for a Phase II Defensive
Registration.
Complainant has established that
the <morganstanleydeanwitter.name>, <morganstanleyfinancialadvisor.name>
and <morganstanleyasia.name> Registered Names were registered
in violation of the Eligibility Requirements.
Having established ERDRP Policy Eligibility Requirements for the
issuance of a Defensive Registration for the Registered Names, the Panel
concludes that the requested relief should be granted.
Accordingly, it is hereby ordered
that Phase I and II defensive registration in the Registered Names is granted
to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 8, 2005
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