Morgan Stanley v. Morgan Stanley Investments
Inc c/o Stanley Morgan
Claim Number: FA0511000590735
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 Morgan Stanley Investments Inc c/o Stanley Morgan (“Respondent”),
11 Christophe Colomb, Paris 75008, France.
The domain name at issue is <morganstanleyinvest.com>,
registered with Core-107.
PANEL
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 1, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 3, 2005.
On November 2, 2005, Core-107 confirmed by e-mail to the National
Arbitration Forum that the <morganstanleyinvest.com>
domain name is registered with Core-107 and that the Respondent is the current
registrant of the name. Core-107 has
verified that Respondent is bound by the Core-107 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 November 8, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 28, 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@morganstanleyinvest.com
by e-mail.
A timely Response was received and determined to be complete on November
28, 2005.
A proposed Additional Submission was received from Complainant on
December 2, 2005.
On December 1, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a large international investment banking and financial
services firm. Complainant owns MORGAN
STANLEY marks that have been in continuous use since 1935, including numerous
registered and pending marks in the United States and elsewhere.
Complainant contends that the disputed domain name <morganstanleyinvest.com> is virtually identical or
confusingly similar to its registered marks.
Complainant further contends that Respondent lacks rights or legitimate
interests in respect of the disputed domain name. In particular, Complainant asserts that Respondent’s name “Morgan
Stanley Investments, Inc.,” was registered in order to make Respondent’s
registration of domain names incorporating Complainant’s mark appear
legitimate, and that Respondent does not conduct any legitimate business under
this name.
Finally, Complainant contends that the disputed domain name has been
registered and is being used in bad faith.
Complainant asserts that the disputed domain name is inherently
deceptive and is likely to confuse Internet users; that Respondent is an alter
ego of Luis Eduardo Silva de Balboa, with whom Complainant is involved in disputes
over several other domain names, including <morganstanley.cl>,
<morganstanleycorp.com>; and that Respondent had actual knowledge of
Complainant and its marks when the disputed domain name was registered.
B. Respondent
Respondent states that it is registered in the State of Delaware to do
business under the name Morgan Stanley Investments, Inc., and that its areas of
business do not conflict with those of Complainant. Respondent further states that its name reflects the names of its
partners, Juan Pablo Morgan of Chile and Archival Stanley of Canada.
C. Additional Submission
In its proposed Additional Submission, Complainant contends inter alia that the Response is
procedurally deficient and requests that it be given no weight by the
Panel. The proposed Additional
Submission also contains responsive arguments and, to a limited extent,
information about facts that have arisen subsequent to Complainant’s initial
submission.
In the view of the Panel, consideration of Complainant’s proposed
Additional Submission is unnecessary under the circumstances of this case. The Panel therefore declines to consider the
proposed Additional Submission.
FINDINGS
The Panel finds that the disputed domain name
is confusingly similar to a mark in which Complainant has rights; that
Respondent lacks rights or legitimate interests in respect of the disputed
domain name; and that the disputed domain name was registered and is being used
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
The disputed domain name appends
Complainant’s mark to the generic word “invest” and the top-level domain
“.com.” Complainant contends that the
domain name is confusingly similar to its mark, and Respondent does not dispute
this contention. The Panel therefore
finds that the domain name is confusingly similar to Complainant’s mark.
The disputed domain name is virtually
identical to Complainant’s longstanding famous mark, while Respondent has
offered no evidence of legitimate business activities conducted under the name
“Morgan Stanley Investments, Inc.” Its
registration of that business name appears quite clearly pretextual, in the
view of the Panel, and Respondent has not even substantiated its claim that the
name reflects the surnames of two of its partners. The Panel therefore finds that Respondent lacks rights or
legitimate interests in respect of the disputed domain name.
Paragraph 4(b) of the Policy lists four exemplary circumstances which
serve as evidence of bad faith registration and use of a domain name. In the view of the Panel, the evidence here
is sufficient to support such an inference under any of the four exemplary
circumstances listed in the Policy.
Respondent offers nothing more than an implausible and unsubstantiated
explanation for its choice of the disputed domain name and supposed business
name. The Panel finds that the disputed
domain name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanleyinvest.com>
domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 15, 2005
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