Morgan Stanley and Novus Credit Services Inc. v. Digi Real Estate Foundation
Claim Number: FA0608000767185
Complainants are Morgan Stanley and Novus Credit Card Services Inc. (collectively, “Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324, Panama City N7 8DJ, PA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <morgastanley.com>, <morganstaney.com>, <discovr.com> and <discovvercard.com>, registered with Enom, Inc., and <morganstandley.com>, registered with Zippydomains.ca.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 4, 2006.
On August 2, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <discovr.com> and <discovvercard.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 August 3, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <morgastanley.com> and <morganstaney.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 the Policy.
On August 11, 2006, Zippydomains.ca confirmed by e-mail to the National Arbitration Forum that the <morganstandley.com> domain name is registered with Zippydomains.ca and that Respondent is the current registrant of the name. Zippydomains.ca has verified that Respondent is bound by the Zippydomains.ca registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On August 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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@morgastanley.com, postmaster@morganstaney.com, postmaster@morganstandley.com, postmaster@discovr.com and postmaster@discovvercard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morgastanley.com>, <morganstaney.com> and <morganstandley.com> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark and its <discovr.com> and <discovvercard.com> domain names are confusingly similar to Complainant’s DISCOVER mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, has continuously used the MORGAN STANLEY mark since 1935 in connection with financial and investment services. Morgan Stanley maintains over 600 offices in 28 countries and is one of the largest financial services companies in the world.
Complainant, Novus Credit Services Inc. (“Novus”), is a wholly-owned subsidiary of Morgan Stanley and has continuously used the DISCOVER mark since as early as 1985 to refer to its credit card services. More than 50 million customers own credit cards bearing Novus’ DISCOVER mark, making it one of the world’s most used credit cards.
The Panel will hereinafter refer to both parties simply as “Complainant.”
Complainant has registered both marks with the United States Patent and Trademark Office (“USPTO”) (MORGAN STANLEY: Reg. No. 1,707,196 issued August 11, 1992; DISCOVER: Reg. No. 1,479,946 issued March 8, 1988). Complainant also holds trademark registrations for both marks with numerous other trademark authorities around the world.
Respondent, Digi Real Estate Foundation c/o NA NA, registered the disputed domain names on the following dates: <discovvercard.com> on March 9, 2005, <discovr.com> on June 28, 2005, <morganstandley.com> on November 26, 2005, <morgastanley.com> on March 25, 2006 and <morganstaney.com> on March 25, 2006.
Respondent is using the disputed domain names to operate commercial web directories with links to various third-party websites unrelated to Complainant. Some of these third-party websites offer financial or credit card services that compete with Complainant
Respondent has also been the subject of at least nine adverse UDRP proceedings with the National Arbitration Forum, including a previous dispute with Complainant. See Morgan Stanley v. Digi Real Estate Found., FA 604974 (Nat. Arb. Forum Jan. 23, 2006) (transferring the <mogranstanley.com> domain name to Complainant); see also The Vanguard Group Inc. v. Digi Real Estate Found., FA 701259 (Nat. Arb. Forum June 16, 2006) (concluding that the respondent registered multiple domain names containing misspellings of the complainant’s VANGUARD mark in bad faith); see also Allegiant Air v. Digi Real Estate Found., FA 712332 (Nat. Arb. Forum June 28, 2006) (transferring the <allegiantravel.com> domain name to the complainant from Respondent).
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 and DISCOVER marks through registration of the marks with the USPTO and other national trademark authorities. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
Respondent’s <morgastanley.com>, <morganstaney.com>
and <morganstandley.com> domain names represent various
misspellings of Complainant’s MORGAN STANLEY mark. In State Farm Mutual Auto Ins. Co. v. Unasi Mgmt., Inc., FA
440325 (Nat. Arb. Forum Apr. 29, 2005), the respondent registered eighteen
domain names that were misspelled versions of the complainant’s STATE FARM
INSURANCE mark. The panel stated, “Respondent’s
registration of domain names consisting of typographically erroneous versions
of Complainant’s mark does not negate the confusing similarity of the domain
names with Complainant’s mark pursuant to Policy ¶ 4(a)(i)).” Id. Here Respondent’s domain names, which
misspell Complainant’s registered MORGAN STANLEY mark, are confusingly similar
to the mark pursuant to Policy ¶ 4(a)(i).
See Intelius, Inc. v. Kim Sang Hyn, FA 703175 (Nat. Arb. Forum
Jul. 5, 2006) (finding the <intellus.com> domain name to be confusingly
similar to the complainant’s INTELIUS mark because the domain name differed
from the mark by one letter and was visually similar).
Respondent’s <discovr.com> and
<discovvercard.com> domain names are confusingly similar to
Complainant’s DISCOVER mark for the same reason. The <discovr.com> domain name contains the entire
mark except for “e,” while the <discovvercard.com> domain name
adds an extra “v” and the term “card.”
None of these alterations sufficiently distinguish the disputed domain
names from the mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb.
Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to
words, a respondent does not create a distinct mark but nevertheless renders
the domain name confusingly similar to the complainant’s marks); see also
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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain names. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain names under the name “Digi
Real Estate Foundation c/o NA NA,” and there is no other evidence in the record
suggesting that Respondent is commonly known by any of the disputed domain
names. Accordingly, the Panel finds
that Respondent has not established rights or legitimate interests in any of
the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark); see also Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
In addition, Respondent’s domain names each resolve to a commercial web directory containing links to Complainant’s competitors and to other content. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded that respondent’s registration and use of confusingly similar domain names to divert Internet users to its own website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to the complainant’s direct competitors only reinforced that conclusion. Likewise, Respondent is also diverting Internet users to its own website containing links to Complainant’s competitors, and therefore its use of the disputed domain names also is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Because Respondent has been the subject of at least nine
previous UDRP proceedings, including one with Complainant, the Panel finds that
Respondent has demonstrated a pattern of registering domain names containing
others’ marks in order to prevent these parties from reflecting their marks in
domain names. Such conduct is
prohibited under Policy ¶ 4(b)(ii). See
Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and
determined that Respondent is in violation of Policy ¶ 4(b)(ii) because
Respondent registered the disputed domain names to prevent Complainant from
reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>,
<ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>,
<ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>,
<ayhoooshopping.com>, <ayhooo-uk.com>, and
<searchayhooo.com>] domain names herein constitutes a pattern of
registering trademark-related domain names in bad faith.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc.,
FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy
¶ 4(b)(ii) because the domain name prevented the complainant from reflecting
its mark in a domain name and the respondent had several adverse decisions
against it in previous UDRP proceedings, which established a pattern of
cybersquatting).
Respondent has registered and is using the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain
names each resolve to a website with links to Complainant’s competitors and to
unrelated content. The Panel infers
that Respondent receives click-through fees for each consumer it diverts to
third-party websites. Respondent is
taking advantage of the confusing similarity between Complainant’s MORGAN
STANELY and DISCOVER marks and the domain name in dispute in order to profit
from the goodwill associated with the mark.
This diversionary use of the disputed domain names provides evidence of
bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of
<yahgo.com> to operate its search engine, a name that infringes upon
Complainant’s mark, Respondent is found to have created circumstances
indicating that Respondent, by using the domain name, has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s
website by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of the website or of a product
or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Respondent has
registered and used the disputed domain names for the purpose of disrupting the business of Complainant, because
Respondent’s websites at the disputed domain names display links to
Complainant’s competitors. Therefore,
Respondent has registered and used the domain names in bad faith pursuant to
Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Furthermore, Respondent’s various misspellings of Complainant’s MORGAN STANLEY and DISCOVER marks in the disputed domain names indicate that Respondent is typosquatting. Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel concludes that Complainant has satisfied 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 <morgastanley.com>, <morganstaney.com>, <morganstandley.com>, <discovr.com> and <discovvercard.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 22, 2006
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