Morgan Stanley v. Fraud Recovery a/k/a FraudRecovery
Claim Number: FA0602000649456
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 a/k/a FraudRecovery (“Respondent”), box 2418, Livingston, NJ 07039.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanley-privateequity.info>, registered with Enom, Inc. (R126-Lrms).
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 23, 2006.
On February 22, 2006, Enom, Inc. (R126-Lrms) confirmed by e-mail to the National Arbitration Forum that the <morganstanley-privateequity.info> domain name is registered with Enom, Inc. (R126-Lrms) and that Respondent is the current registrant of the name. Enom, Inc. (R126-Lrms) has verified that Respondent is bound by the Enom, Inc. (R126-Lrms) 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 February 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 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@morganstanley-privateequity.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <morganstanley-privateequity.info> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanley-privateequity.info> domain name.
3. Respondent registered and used the <morganstanley-privateequity.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is an international financial services firm that has been continuously using the MORGAN STANLEY mark in commerce since 1935. Complainant merged with Dean Witter, Discover & Co. in 1997 to form one of the world’s largest financial services companies. Complainant currently maintains 600 offices in twenty-eight countries.
Complainant has registered the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 issued August 11, 1992 and Reg. No. 2,729,993 issued June 24, 2003). Complainant is also the current registrant of the <morganstanley.com> domain name (registered May 24, 1996).
Respondent registered the <morganstanley-privateequity.info>
domain name on November 16, 2005.
Respondent’s domain name currently resolves to a web directory
displaying sponsored links to other financial services companies in direct
competition with Complainant. At one
time, Respondent’s domain name resolved to the website of Strategic Investment
Group, a competing financial services company offering a “comprehensive
approach for managing customized portfolios for institutional and private
investors.”
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 established rights in the MORGAN STANLEY
mark through registration of the mark with the USPTO. See 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.”); see
also 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.”).
Respondent has registered a domain name confusingly similar to Complainant’s MORGAN STANLEY mark because the <morganstanley-privateequity.info> domain name includes Complainant’s entire mark and simply adds a generic term describing a division of Complainant’s financial services business. In Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panel concluded that the respondent’s <aigassurance.com> domain name failed to “sufficiently differentiate” the name from the complainant’s AIG mark because the appended term “assurance” was “related directly to the complainant’s business.” Thus, the panel held that the domain name was confusingly similar to the mark under Policy ¶ 4(a)(i). Id. Here, then, Respondent has failed to sufficiently distinguish its domain name from Complainant’s MORGAN STANLEY mark by adding a generic term, and the <morganstanley-privateequity.info> domain name is, therefore, confusingly similar to the mark. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).
Moreover, the elimination of spaces between the two words of Complainant’s MORGAN STANLEY mark, the addition of a hyphen between the mark and the generic term, and the addition of the generic top-level domain “.info” in the <morganstanley-privateequity.info> domain name do not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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 finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and
legitimate interests in the <morganstanley-privateequity.info>
domain name. Complainant must first
make a prima facie case in support of its allegations, and the burden
then shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <morganstanley-privateequity.info>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); see
also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where the respondent fails to
respond). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
There is no evidence in the record that Respondent is
commonly known by the <morganstanley-privateequity.info> domain
name. Respondent has registered the
domain name under the name “Fraud Recovery,” and at one time, Respondent’s
domain name resolved to the <strategicgroup.com> domain name, the website
for the Strategic Management Group.
Consequently, Respondent has not established rights or legitimate
interests in the <morganstanley-privateequity.info> domain name
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that the respondent was not commonly known by the domain name
<greatsouthernwood.com> where the respondent linked the domain name to
<bestoftheweb.com>).
Moreover, Respondent’s <morganstanley-privateequity.info> domain name, which includes Complainant’s MORGAN STANLEY mark, resolves to a web directory containing links to Complainant’s direct competitors, and at one time the domain name linked directly to the website of a competitor, the Strategic Management Group. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was using a domain name confusingly similar to the complainant’s AMERITRADE mark to divert Internet users to a competing financial services website. The panel concluded that redirecting Internet users to a competing website could not be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s own commercial gain could not be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Because Respondent has used the disputed domain name to redirect Internet users to a website in direct competition with Complainant and is currently operating a web directory providing links to Complainant’s direct competitors, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). Therefore, Respondent lacks rights and legitimate interests in the disputed domain name. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <morganstanley-privateequity.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is using the disputed domain name to redirect Internet users seeking Complainant’s financial services to competing websites, including the Strategic Management Group. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. In this case, Respondent is also redirecting Internet users seeking Complainant’s products and services to competing websites for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s MORGAN STANLEY mark, and profiting off of the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morganstanley-privateequity.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 5, 2006
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