Morgan Stanley v. Ali Batgi
Claim Number: FA0705000991849
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 <morganstanwey.com>, registered with DotRegistrar.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 24, 2007.
On May 22, 2007, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <morganstanwey.com> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar 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 May 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 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@morganstanwey.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2007, 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 in this proceeding.
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 an international investment banking corporation, offering various financial and investment services to a wide range of clients.
Complainant offers these services under its MORGAN STANLEY mark and has used the mark continuously for more than 70 years.
Complainant holds trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (including service mark Reg. No. 1,707,196, issued August 11, 1992).
Respondent is not authorized or licensed to use Complainant’s MORGAN STANLEY service mark.
Respondent registered the <morganstanwey.com> domain name on December 2, 2006.
Respondent’s domain name resolves to a website displaying a message that the site is under construction, and containing no other links.
Respondent’s <morganstanwey.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.
Respondent does not have any rights or legitimate interests in the domain name <morganstanwey.com>.
Respondent registered and uses the <morganstanwey.com> 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 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 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 a 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 MORGAN STANLEY mark with the USPTO sufficiently establishes its rights in the mark under 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 <morganstanwey.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark, as it simply substitutes the letter “w” for the letter “l” in Complainant’s mark, which does not change the overall impression of the mark. Moreover, the addition of the generic top-level domain (“gTLD”) “.com” in the disputed domain name is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain names. Thus, the <morganstanwey.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in that complainant's mark with the letter “e”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000): "[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ." Further see 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.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <morganstanwey.com> domain name. Once Complainant has made out a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. In the instant case, Complainant has made a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Respondent’s failure to answer the Complaint raises the
presumption that Respondent lacks rights or legitimate interests in the
disputed domain name. See
Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
We begin by noting that Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <morganstanwey.com> domain name. And, there is nothing else in the record to suggest that Respondent is commonly known by the disputed domain name. Furthermore, Complainant alleges, and Respondent does not deny, that Respondent is not authorized or licensed to use Complainant’s MORGAN STANLEY mark. Therefore, we conclude that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 where that respondent is not known by the mark).
In addition, it is undisputed on the record before us that Respondent’s
domain name <morganstanwey.com> resolves
to a website posting a “site under construction” message. In the circumstances here presented, this
failure to develop a website at the disputed domain name does not qualify as 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 Broadcom
Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding
that a respondent’s use of the disputed domain name to display an “under
construction” page did not constitute a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)); see also
Hewlett-Packard Co. v.
Rayne, FA 101465 (Nat. Arb. Forum Dec. 17,
2001) (finding that an “under construction” page hosted at the disputed domain
name did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
The fact that Respondent is using the <morganstanwey.com> domain name to redirect Internet users to a webpage indicating that the site is under construction is evidence that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s non-use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where a respondent made no use of the domain name there in question, and there were no other indications that that respondent could have registered and used the domain name in question for any non-infringing purpose).
Moreover, it appears that Respondent registered the <morganstanwey.com> domain name with at least constructive knowledge of
Complainant’s rights in the MORGAN STANLEY service 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 constructive knowledge is, without more, evidence of 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).
For these reasons,
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 must be GRANTED.
Accordingly, it is Ordered that the <morganstanwey.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 26, 2007
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