Morgan Stanley v. Fraud Recovery
Claim Number: FA0601000635046
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 Fraud Recovery (“Respondent”), box 2418, Livingston, NJ 07039.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <msdwsmart.info>, registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2006.
On January 24, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <msdwsmart.info> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2006 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@msdwsmart.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole 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:
Complainant is a leading international provider of investment and other financial services 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 is the owner of the MSDW mark, which has been developed and used by Complainant and its predecessors-in-interest since as early as 1997 and remains in use in the United States and throughout the world.
Complainant has registered its MSDW trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,451,420 issued May 15, 2001).
Complainant also owns the <msdw.com> domain name, as well as numerous variations thereof.
Respondent is not a licensee of Complainant and has no authorization to use Complainant’s mark.
Respondent registered the <msdwsmart.info> domain name on October 18, 2005.
Respondent is using the disputed domain name to divert Internet users to a website that features links to a variety of other websites, some of which offer services in direct competition with Complainant.
Respondent’s <msdwsmart.info> domain name is confusingly similar to Complainant’s MSDW mark.
Respondent does not have any rights or legitimate interests in the <msdwsmart.info> domain name.
Respondent registered and uses the <msdwsmart.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the MSDW mark with the USPTO establishes Complainant’s rights in the 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.”).
Respondent’s <msdwsmart.info> domain name incorporates Complainant’s MSDW mark in its entirety along with the word “smart” and the top-level domain “.info.” Because this is so, the disputed domain name is confusingly similar to Complainant’s mark despite the addition of another word to the mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
Additionally, the inclusion of “.info” in the disputed domain name does not negate the confusing similarity between Respondent’s <msdwsmart.info> domain name and Complainant’s MSDW mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002): “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has made a prima facie case in support of its allegations that Respondent does not have rights or legitimate interests in the <msdwsmart.info> domain name. Therefore, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel will evaluate the evidence of record to determine whether Respondent has rights or legitimate interests in the domain name <msdwsmart.info>. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
See also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with a respondent to demonstrate that it has rights or legitimate interests in a disputed domain name).
Complainant alleges, and Respondent does not deny, that Respondent is using the <msdwsmart.info> domain name, which is confusingly similar to Complainant’s MSDW mark, to divert Internet users to a website that features links to other websites offering competing financial services. From these circumstances, the Panel infers that Respondent receives click-through fees in exchange for diverting Internet users in this fashion. Respondent’s use of the disputed domain name in this manner is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”), see also Prudential Ins. Co.of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
Complainant asserts, without contradiction from Respondent, that Respondent is not a licensee of Complainant, and has no authorization to use Complainant’s mark. Complainant also asserts that Respondent registered the <msdwsmart.info> domain name years after Complainant registered the MSDW mark. Moreover, there is nothing in the WHOIS information indicating that Respondent is or ever has been commonly known as <msdwsmart.info>. The Panel therefore concludes that Respondent has not established rights or legitimate interests in the <msdwsmart.info> name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when the respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) a complainant’s prior rights in the domain name precede a respondent’s registration; (3) a respondent is not commonly known by the domain name in question).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <msdwsmart.info> domain
name, which is confusingly similar to Complainant’s MSDW mark, to present
Internet users with links to websites that offer services from Complainant’s
competitors. The Panel infers that
Respondent receives payment in return for directing Internet users to these
other websites. Such use amounts to bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used
a domain name confusingly similar to a complainant’s mark to attract users to a
website sponsored by the respondent);
see also State Farm Mut. Auto.
Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that
a respondent registered the domain name <statefarmnews.com> in bad faith
because that respondent intended to use a complainant’s marks to attract the
public to the web site without permission from the complainant).
Moreover, it is evident that Respondent registered the
contested domain name with either actual or constructive knowledge of
Complainant’s rights in the MSDW mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested shall be GRANTED.
Accordingly, it is Ordered that the <msdwsmart.info> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 3, 2006
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