National Arbitration Forum

 

DECISION

 

Morgan Stanley v. Michael Woods

Claim Number: FA0512000604103

 

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 Michael Woods (“Respondent”), Ashbed Cottage, Boraston Bank, Tenbury Wells, Worcstersire WR15 8LQ.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <morganstanleyplatinum.com>, registered with Tucows Inc.

 

PANEL

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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 5, 2005.

 

On December 2, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <morganstanleyplatinum.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 December 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 27, 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@morganstanleyplatinum.com by e-mail.

 

A timely Response was received and determined to be complete on December 27, 2005.

 

Both Complainant and Respondent presented timely Additional Submissions.

 

On January 3, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         Complainant is an international leader in investment banking and an innovator in financial services and products and was founded in 1935.  In 1997, Complainant merged with Dean Witter, Discovery & Co. to form Morgan Stanley Dean Witter & Co., which changed its name to Morgan Stanley in 2002.  Complainant offers a full range of financial and investment services to a full range of clients through a unique combination of institutional and retail capabilities.  With over 600 offices in 28 countries, Complainant offers truly global access to financial markets and advice.

 

            2.         Complainant is the owner of the MORGAN STANLEY family of marks, which represent some of the most famous marks in the financial world.  The MORGAN STANLEY family of marks have been developed and used by Complainant and its predecessors-in-interest since at least as early as 1935, and remain in use in the United States and throughout the world.  Complainant owns the following marks registered with the United States Patent and Trademark Office:  Reg. No. 1,707,196 for MORGAN STANLEY®; Reg. No. 2,729,993 for MORGAN STANLEY and Design®; Reg. Nos. 2267583, 2162400, 2257643 and 2138990 with the UK Trademark Office and Reg. Nos. 175950, 2154052, 2143849 and 2593093 with the Community Trademark Office or OHIM, as well as numerous other registrations and pending applications for marks containing MORGAN STANLEY and similar registrations and applications outside the United States.  Complainant has used, promoted and advertised its MORGAN STANLEY family of marks extensively in the field of financial services and products, and as a result, they have become famous.

 

            3.         Complainant is also the owner of the <morganstanley.com> domain name, as well as numerous variations thereof in the “.com” and other gTLDs and numerous similar country code domain name registrations.  Complainant is the owner of the <morganstanleycard.co.uk> domain name.  This website contains information about Complainant’s “platinum” and “gold” level credit card services which are offered in the United Kingdom, Respondent’s home country.

 

            4.         The disputed domain name, <morganstanleyplatinum.com>, is virtually identical or confusingly similar to Complainant’s registered mark, MORGAN STANLEY® and to Complainant’s <morganstanley.com> domain name.  The disputed domain name incorporates Complainant’s MORGAN STANLEY mark in its entirety and adds the generic word “platinum.”

            5.         Respondent does not have any legitimate trademark rights in a trademark or service mark registration for a mark that is identical, similar or in any way related to Complainant’s MORGAN STANLEY mark or any of the marks in the MORGAN STANLEY family of marks.

 

            6.         MORGAN STANLEY/MORGAN STANLEY Platinum is not Respondent’s personal name, Respondent does not actually engage in any business or commerce under the name MORGAN STANLEY/MORGAN STANLEY Platinum, and Respondent is not known to the public under the name MORGAN STANLEY/MORGAN STANLEY Platinum.

 

            7.         Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use the MORGAN STANLEY mark or any mark in the MORGAN STANLEY family of marks or to register the <morganstanleyplatinum.com> domain name.

 

            8.         Respondent is not and has not been using the <morganstanleyplatinum.com> domain name in connection with any bona fide offering of goods and services.  Respondent’s domain name resolves to the home page of Respondent’s registrar, UKReg.

 

            9.         Because of the worldwide prior use and registration of the distinctive MORGAN STANLEY family of marks by Complainant and its predecessors-in-interest, Respondent had actual or at a minimum constructive knowledge of such use.

 

            10.       Respondent has not made and is not now making any legitimate non-commercial or fair use of the domain name.

 

            11.       Respondent has registered and used the <morganstanleyplatinum.com> domain name in bad faith because Respondent had actual and constructive knowledge of Complainant’s famous MORGAN STANLEY family of marks.

 

            12.       Respondent’s bad faith is also evident because he has not made use of the domain name, <morganstanleyplatinum.com>, which is obviously connected with the well-known MORGAN STANLEY name, since its registration in August 2005.  Respondent registered the domain name as an opportunistic venture to gain from Complainant’s goodwill in the MORGAN STANLEY marks and such passive holding has been held to be evidence of bad faith.

 

B. Respondent

            1.         Complainant’s charge of “confusingly similarity” is not challenged by Respondent.

 

            2.         With respect to Complainant’s charges that Respondent does not have trademark rights related to the name MORGAN STANLEY; that MORGAN STANLEY is not his personal name; and he is not a licensee of Complainant, they are not contested by Respondent.

 

            3.         Respondent has been using the disputed domain name registration in providing a service.  He conducts seminars as a business consultant and uses the disputed domain name as an example of a large company’s negligence and ineptitude in the registration of domain names pertinent to its business.

 

            4.         Respondent submits that one cannot “use” and “not use” at the same time.

 

            5.         Respondent, in his private and business life, has never acted in bad faith.

 

            6.         If Complainant had requested, Respondent would have given it the disputed domain name.

 

C. Additional Submission by Complainant

            1.         Complainant did request that the disputed domain name be transferred to it.  The failure of Respondent to answer caused the initiation of the proceeding.

 

            2.         Respondent states that he considers the statements made by Complainant an insult and a defamation of his character.  The paragraphs merely demonstrate how Respondent’s actions meet the requirements of paragraph 4(a)(iii) of the ICANN Policy.  Respondent, however, has submitted no evidence to rebut the factual bases of those statements.

 

            3.         Respondent admits in his Reply, Complainant’s rights and, that he had actual knowledge of those rights, including having a MORGAN STANLEY Platinum card for the past twenty years.

 

            4.         Respondent states that the <morganstanleyplatinum.com> domain name is a “good example of even large company’s negligence and ineptitude in the registration of domain names pertinent to their businesses.”  Complainant notes that it is under no obligation to register all possible domains which contain its trademark/service mark.  While Complainant has registered a certain number of domains “defensively,” to register all such permutations would simply be cost-prohibitive.

 

            5.         Respondent does not demonstrate how he has been using the domain name in connection with the provisions of a legitimate service.  Even if Respondent is teaching a seminar, it is not clear why Respondent would need to have registered the <morganstanleyplatinum.com> domain name in order to teach that seminar, nor how that seminar is providing any service using the domain.

 

D. Additional Submission by Respondent

            1.         Respondent accepts none of Complainant’s contentions other than Morgan Stanley is Morgan Stanley and his name is not Morgan Stanley.

 

            2.         “Use” and “not used” are mutually exclusive.

 

            3.         One cannot submit printed evidence of a verbally delivered seminar.  Respondent’s role is mainly consultative and his seminars are delivered to very small groups of people and are not formally structured.

 

            4.         Respondent has demonstrated that he was using the domain name to provide a legitimate service, for having registered the domain name himself, adds weight to the point he makes in his seminars.  Complainant did not ask for the transfer of the domain name.  It did not ask but aggressively demanded.  Respondent does not respond to demands.  He does respond to polite and courteous requests.  Complainant wishes Respondent to transfer the disputed domain name.  The Complaint has resulted in Respondent spending a considerable amount of time and therefore incurring expense ($8,704 in lost revenue) in responding to it.  Respondent will forego these costs and should Morgan Stanley, as a form of compensation for Respondent’s loss, donate $5,000 to Teme Valley Sunshine, a charity which provides transport to disabled children in the Teme Valley area and which at present is raising money to buy a new minibus, Respondent will transfer the domain name forthwith.

 

FINDINGS AND DETERMINATIONS

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.

 

Identical and/or Confusingly Similar

 

It is evident that the disputed domain name is confusingly similar to Complainant’s mark.

 

It is found and determined that Complainant has established rights in the MORGAN STANLEY mark pursuant to paragraph 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 199803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); 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.”).

 

Further, it is found and determined that the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.  The only difference between the two is the addition of the word “platinum,” which is a term related to Complainant’s credit card business and does not significantly distinguish the domain name from the mark.  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); Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

 

Complainant has established the required Policy paragraph 4(a)(i) element.

 

Rights or Legitimate Interests

 

As will be seen, the Panel has found that Respondent did not register and is not using the disputed domain in bad faith.  It follows, accordingly, that he does have rights and a legitimate interest in the disputed domain name.

 

Registration and Use in Bad Faith

 

Paragraph 4(c)(iii) of the Policy states that a Respondent may demonstrate his rights and legitimate interest in a domain name, inter alia, as follows:

 

“. . .you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”  [Emphasis supplied.]

 

Respondent, a business consultant, asserts that he is using the disputed domain name only for illustration of purported negligence and ineptitude in the seminars he conducts.  To the Panelist, this is a “fair use.”

 

There have been two previous Morgan Stanley arbitrations which resolved in favor of Complainant.  See Morgan Stanley v. Jackson, FA 244092 (Nat. Arb. Forum Apr. 19, 2004); Morgan Stanley v. Chan, FA 244123 (Nat. Arb. Forum Apr. 23, 2004).

 

Each proceeding however, was a default arbitration and, more importantly, each proceeding involved a direct competitor of Complainant, with potential of consumer confusion.

 

This is not the case here.

 

Accepting Respondent’s contention that he uses the disputed domain name in business seminars only to demonstrate negligent and inept business practices, this is a use in a non-trademark manner.  If this is so, and it has not been shown otherwise, there can be no trademark infringement or the demonstration of bad faith in a domain name dispute.

 

When a non-trademark use is made, that does not depend for its value on the existence of the trademark, it is then appropriate to use the trademark as another’s domain.  See U.S. of Am. Dep’t of the Navy NAVSEA v. NAVYWEB, FA 105977 (Nat. Arb. Forum May 21, 2002); Avery Dennison Corp. v. Sumpton, 189 F.3sd 868 (9th Cir. 1999).

 

In Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1065-66 (9th Cir. 1999), it was said:

 

Contrary to West Coast’s contentions, we are not in any way restricting West Coast’s right to use terms in a manner which would constitute fair use under the Lanham Act.  See New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 306-09 (9th Cir. 1992); see also August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 617-18 (7th Cir. 1995).  It is well established that the Lanham Act does not prevent one from using a competitor’s mark truthfully to identify the competitor’s goods, see, e.g., Smith v. Chanel, Inc., 402 F.2d 562, 563 (9th Cir. 1968) (stating that a copyist may use the originator’s mark to identify the product that it has copied), or in comparative advertisements, see New Kids on the Block, 971 F.2d at 306-09.  This fair use doctrine applies in cyberspace as it does in the real world.  See Radio Channel Networks, Inc. v. Broadcast.Com, Inc., No. 98 Civ. 4799, 1999 WL 12445, at *5-*6 (S.D.N.Y. Mar. 8, 1999); Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998); Welles 7 F.Supp.2d at 1103-04; Patmont Motor Werks, Inc. v. Gateway Marine, Inc., No.96-2703, 1997 WL 811770, at *3-*4 & n. 6 (N.D. Cal. Dec. 18, 1997); see also Universal Tel-A-Talk, 1998 WL 76440, 15 *9.

 

Here, there is no evidence whatever that Respondent registered and is using the disputed domain name to confuse consumers or for commercial gain or to tarnish the mark.  To the contrary, Respondent’s use is “fair.”

 

Thus, Complainant has not established the required elements of “no rights or legitimate interest” and “bad faith registration and use” as required by the Policy.

 

DECISION

Not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED to Complainant.

 

 

 

 

Judge Irving H. Perluss (Retired), Panelist
Dated:  January 16, 2006