Morgan Stanley v. Ralph Parker
Claim Number: FA0509000567680
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 Ralph Parker (“Respondent”), 5525 Culross Trl., East Canaan, CT 06024.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanleymutualfunds.com>, registered with TLDS, LLC d/b/a SRSplus.
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 23, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2005.
On September 28, 2005, TLDS, LLC d/b/a SRSplus confirmed by e-mail to the National Arbitration Forum that the <morganstanleymutualfunds.com> domain name is registered with TLDS, LLC d/b/a SRSplus and that Respondent is the current registrant of the name. TLDS, LLC d/b/a SRSplus has verified that Respondent is bound by the TLDS, LLC d/b/a SRSplus 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 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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@morganstanleymutualfunds.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 24, 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 <morganstanleymutualfunds.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleymutualfunds.com> domain name.
3. Respondent registered and used the <morganstanleymutualfunds.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. Founded in 1935, Complainant now offers a full range of financial and investment services, including mutual fund related services, to a full range of clients through a unique combination of institutional and retail capabilities.
Complainant holds various registrations with the U.S. Patent and Trademark Office (“USPTO”) and international trademark agencies, including MORGAN STANLEY for investment and banking services, registered on August 11, 1992 (Reg. No. 1,707,196), MORGAN STANLEY for computer, investment, and banking services, registered on June 24, 2003 (Reg. No. 2,729,993), MORGAN STANLEY DEAN WITTER, registered on December 25, 2001 (Reg. No. 2,522,916), and others.
Respondent, Ralph Parker, registered the disputed domain name on May 11, 2005. Respondent is using the disputed domain name to refer internet traffic to the <municipalbondbroker.com> domain name. The website located at <municipalbondbroker.com> contains links not only to Complainant’s website but also third party websites that offer services ranging from financial services to a website offering gifts for cat lovers. In addition, one part of the resultant website refers to an internal page within Complainant’s website. This page is the corporate “homepage” of an employee, listing his vitae and “investment philosophy.”
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 offered evidence of its USPTO registrations of the MORGAN STANLEY mark to establish rights pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant has established rights in the MORGAN STANLEY mark for matters of this dispute. 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.”).
The Panel finds that Respondent’s <morganstanleymutualfunds.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. The only difference is the addition of the
words “mutual” and “funds,” which do not significantly distinguish the domain
name from the mark and describe Complainant’s business. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also
Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the respondent’s domain name <marriott-hotel.com> is
confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests. The <morganstanleymutualfunds.com>
domain name refers Internet users to the <municipalbondbroker.com> domain
name. The resultant website at the
<municipalbondbroker.com> domain name contains links not only to
Complainant’s website but also third party websites that offer services ranging
from financial services to a website offering gifts for cat lovers. The Panel holds that using Complainant’s
mark to refer Complainant’s customers to third party websites is not a bona fide offering of a good or
service pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the complainant’s
mark without authorization to attract Internet users to its website, which
offered both the complainant’s products and those of the complainant’s
competitors); see also Chanel,
Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of
the complainant’s mark to sell the complainant’s perfume, as well as other
brands of perfume, is not bona fide use).
There is nothing in the record, including the WHOIS
registration information, that indicates that Respondent is commonly known by
the <morganstanleymutualfunds.com> domain name. The Panel finds that Respondent does not
have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The <morganstanleymutualfunds.com> domain name
refers Internet users to the <municipalbondbroker.com> domain name. The resultant website at the
<municipalbondbroker.com> domain name offers links to services similar to
those offered by Complainant and to unrelated third party businesses. The Panel infers that Respondent is
receiving click-through fees for these referrals. Therefore, the Panel holds that Respondent has registered and
used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because it appropriates a domain name that is confusingly similar to
Complainant’s mark for commercial gain.
See Luck's Music Library v.
Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding
that the respondent engaged in bad faith use and registration by using domain
names that were identical or confusingly similar to the complainant’s mark to
redirect users to a website that offered services similar to those offered by
the complainant); see also 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 the
complainant’s well-known marks, thus creating a likelihood of confusion strictly
for commercial gain).
The Panel also finds that Respondent is passing itself as
Complainant. One of the web pages in
the resultant website refers to an internal page within Complainant’s
website. The Panel finds that
Respondent is attempting to imply it is Complainant by passing Internet users
through Complainant’s corporate web offerings vis-à-vis the disputed domain
name, which is bad faith pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA
101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222
(WIPO May 29, 2000) (finding that the respondent’s use of the title
“Dodgeviper.com Official Home Page” gave consumers the impression that the
complainant endorsed and sponsored the respondent’s website).
The Panel finds that 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 <morganstanleymutualfunds.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 4, 2005
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