Morgan Stanley v. Miguel Camacho
Claim Number: FA0509000567681
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 Miguel Camacho (“Respondent”), 2585 Yukon Ft., Daytona Beach, FL 32123.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanleybondbroker.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.
Hon. Ralph Yachnin 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 <morganstanleybondbroker.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@morganstanleybondbroker.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin 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 <morganstanleybondbroker.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanleybondbroker.com> domain name.
3. Respondent registered and used the <morganstanleybondbroker.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 that was founded in 1935. In 1997, Complainant merged with Dean Witter, Discover & Co. to form Morgan Stanley Dean Witter & Co., which changed its name to Morgan Stanley in 2002. 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 has registered its marks with the U.S. Patent and Trademark Office (“USPTO”) and other international trademark authorities. It holds the USPTO registrations for MORGAN STANLEY, registered on August 11, 1992 (Reg. No. 1,707,196), MORGAN STANLEY, 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, Miguel Camacho, registered the <morganstanleybondbroker.com> domain name on May 11, 2005. The <morganstanleybondbroker.com> domain name refers Internet traffic to the <municipalbondbroker.com> domain name. The website located at the <municipalbondbroker.com> domain name offers links to third parties. These third party websites offer services of Complainant’s competitors and other third party services such as “wedding services.” One part of the resultant website refers back to Complainant’s website, featuring the biographical information and “investment philosophy” of a Morgan Stanley employee.
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 offers its USPTO registrations to demonstrate rights in the MORGAN STANLEY mark. The Panel finds that Complainant has established rights in the MORGAN STANLEY mark pursuant to Policy ¶ 4(a)(i). 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 <morganstanleybondbroker.com>
domain name is confusingly similar to Complainant’s MORGAN STANLEY mark. The only difference is the addition of the
words “bond” and “broker,” which do not significantly distinguish the domain
name from the mark and they describe Complainant’s business. See Brambles Indus. Ltd. v. Geelong Car
Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain
name <bramblesequipment.com> is confusingly similar because the
combination of the two words "brambles" and "equipment" in
the domain name implies that there is an association with the complainant’s business);
see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075
(WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the
complainant's mark since it merely adds the word “auction” used in its generic
sense).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The <morganstanleybondbroker.com> domain name
refers Internet users to the <municipalbondbroker.com> domain name. The website located at the
<municipalbondbroker.com> domain name offers links to third parties. These third party websites offer services of
Complainant’s competitors and other third party services such as “wedding
services.” 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 eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also Wells Fargo & Co. v. Party Night Inc. FA
144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the
respondent’s use of “confusingly similar derivatives of Complainant’s WELLS
FARGO mark to divert Internet users to websites featuring pop-up
advertisements” was not a bona fide offering of goods or services).
There is nothing in the record, including the WHOIS
registration information, that indicates that Respondent is commonly known by
the <morganstanleybondbroker.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 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 [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The <morganstanleybondbroker.com> domain name
refers Internet users to the <municipalbondbroker.com> domain name. The website located at the <municipalbondbroker.com>
domain name offers links to third parties.
These third party websites offer services of Complainant’s competitors
and other third party services such as “wedding services.” The Panel infers that Respondent is
receiving click-through fees for these referrals. Therefore, because Respondent is using Complainant’s mark to
create a likelihood of confusion for commercial gain, the Panel holds that
Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
Arriving at the resultant website, the Internet user is a
few clicks away from an official biography of a Morgan Stanley employee. This page at the website associated with the
disputed domain name actually refers to a specific page in Complainant’s
website, giving the casual Internet user the impression that Respondent’s
website is a part of Complainants’ corporate site. Respondent’s wholesale copying of Complainant’s web page is
nothing less then an attempt to pass itself off as Complainant. The Panel finds that this 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); cf. Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at
registration, and a copy of the complainant’s website was used at the domain
name in order to facilitate the interception of the complainant’s customer’s
account information, the respondent’s behavior evidenced bad faith use and
registration of the domain name).
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 <morganstanleybondbroker.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 7, 2005
National
Arbitration Forum
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