Morgan Stanley v. Adewale Sala
Claim Number: FA0612000869418
Complainant is Morgan Stanley (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
1133 Avenue of the
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morganstanley-uk.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
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 Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2007 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-uk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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-uk.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
2. Respondent does not have any rights or legitimate interests in the <morganstanley-uk.com> domain name.
3. Respondent registered and used the <morganstanley-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morgan Stanley, is a leading financial institution with over 600 offices in twenty-eight countries around the world. Complainant has been continuously and extensively promoting itself and its products and services under the MORGAN STANLEY mark since at least 1935.
Complainant’s Internet presence includes websites at the <morganstanley.com> and <morganstanley.co.uk> domain names.
Complainant holds numerous trademark registrations for the MORGAN STANLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,707,196 issued August 11, 1992), as well with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 175,950 issued November 30, 1998; Reg. No. 2,154,052 issued May 29, 2002).
Respondent’s <morganstanley-uk.com> domain
name, which it registered on
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.
Due to Complainant’s valid trademark registrations for the
MORGAN STANEY mark with the USPTO and OHIM, Complainant has sufficiently
demonstrated its rights in the mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA
286993 (Nat. Arb. Forum
Although Respondent resides in
Respondent’s <morganstanley-uk.com>
domain name contains Complainant’s entire registered MORGAN STANLEY mark. Respondent has simply eliminated the space
between the terms comprising the mark and added a hyphen followed by the
geographic identifier “
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent lacks rights and
legitimate interests in the <morganstanley-uk.com> domain name.
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 in the <morganstanley-uk.com>
under to Policy ¶ 4(a)(ii). See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <morganstanley-uk.com> domain name.
See 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); see also 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”). 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 name under the name “Adewale Sala,” and there is no other evidence
in the record suggesting that Respondent is commonly known by the <morganstanley-uk.com> domain name.
As a result, Respondent has not established rights or legitimate
interests in the <morganstanley-uk.com> domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager
Hotels, L.L.C. v. Taylor, FA 173369 (Nat.
Arb. Forum
Moreover, Respondent’s <morganstanley-uk.com> domain name, which the Panel
finds to be confusingly similar to Complainant’s MORGAN STANLEY mark, appears
to be part of a fraudulent “phishing” scheme in which Respondent attempts to
pass itself off as affiliated with Complainant in order to extract financial
and personal information from Complainant’s customers. In HOPE worldwide, Ltd. v. Jin, FA
320379 (Nat. Arb. Forum Nov. 11, 2004), the respondent registered the
<hope-worldwide.org> domain name and used it to operate a website virtually
identical to the website of the complainant, a charity helping disadvantaged
children and the elderly under the HOPE WORLDWIDE mark. The panel defined “phishing” as fooling
Internet users into sharing personal financial data so that “identities can be
stolen, fraudulent bills are run up, and spam e-mail is sent.”
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <morganstanley-uk.com> domain name, which includes
Complainant’s MORGAN STANLEY mark, to divert Internet users seeking
Complainant’s financial services to Respondent’s own website purporting to be
affiliated with Complainant’s MORGAN STANLEY mark. Respondent is taking advantage of the
confusing similarity between Respondent’s domain name and Complainant’s registered
mark in order to profit from the goodwill associated with the mark. Use of the disputed domain name for this
purpose is indicative of bad faith registration and use under Policy ¶
4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb.
Forum
Additionally, Respondent’s
operation of a website at the <morganstanley-uk.com> domain name
that imitates Complainant’s website suggests that Respondent may be attempting
to fraudulently gather personal and financial information from Internet users
who may believe that Respondent’s website is affiliated with Complainant. Therefore, Respondent is engaged in phishing,
which constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA
770909 (Nat. Arb. Forum
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 <morganstanley-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 29, 2007
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