national arbitration forum

DECISION

Morgan Stanley v. LaPorte Holdings, Inc.

Claim Number:  FA0412000374608

PARTIES

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 LaPorte Holdings, Inc. (“Respondent”), 2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <moganstanley.com>, registered with Nameking.com, Inc.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2004.

On December 6, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <moganstanley.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 December 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 2004 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@moganstanley.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On January 6, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <moganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark.

2. Respondent does not have any rights or legitimate interests in the <moganstanley.com> domain name.

3. Respondent registered and used the <moganstanley.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is an international leader in investment banking and a leading provider of financial services and products.  Complainant has a presence in over 27 countries, including the United States.  Through a unique combination of institutional and retail capabilities, Complainant offers a full range of financial and investment services to its clients.

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).

Since 1996, Complainant has owned and operated a website at the <morganstanley.com> domain name, providing products and financial services to its customers over the Internet.

Respondent registered the <moganstanley.com> domain name on November 18, 2003.  Respondent’s domain name resolves to a website that links to competing financial services websites.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the MORGAN STANLEY mark through registration with the USPTO and continuous use of the mark in commerce.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <moganstanley.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark because the domain name incorporates Complainant’s mark in its entirety and merely deletes the letter “r” from the term “morgan.”  Such a minor change is not enough to negate a finding of confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See 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 greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that Respondent's <marrriott.com> domain name was confusingly similar to Complainant's MARRIOTT mark because "Respondent's typosquatting, by its definition, renders the domain name confusingly similar to Complainant's mark").

Furthermore, the addition of the generic top-level domain “.com” is insufficient to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).  

Moreover, the omission of the space between the terms “morgan” and “stanley” in Complainant’s mark does not diminish the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

Moreover, Respondent’s use of the <moganstanley.com> domain name, which is confusingly similar to Complainant’s MORGAN STANLEY mark, to direct Internet users to competing financial services websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Glaxo Group Ltd. v. Glenmore, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that Respondent was not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the trademark pursuant to Policy ¶ 4(c)(iii) because Respondent used the domain name to take advantage of Complainant's mark by diverting Internet users to a competing commercial site); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

In addition, the fact that Respondent’s domain name is merely a typosquatted variation of Complainant’s MORGAN STANLEY mark is evidence that Respondent lacks any rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and <ltdcommodaties.com> disputed domain names were typosquatted versions of Complainant's LTD COMMODITIES mark and "Respondent's 'typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names"); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that Respondent lacked rights and legitimate interests in the disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c'.").

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and used the <moganstanley.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by registering a domain name which is confusingly similar to Complainant’s famous mark and using it to divert Internet users to a website that links to competing financial services.  See Six Continents Hotels, Inc. v. Asia Ventures, D2003-0659 (WIPO Oct. 14, 2003) (finding that Respondent registered a domain name primarily to disrupt the business of its competitor because it directed “its web site to travel-related services in competition with the Complainant and is deriving a financial benefit from such direction and redirection of users to such sites, particularly, through banner advertisements, pop-up windows and its affiliate relationships”); see also Pitanguy v. Pitanguy Plastic Surgical Clinic, FA 205125 (Nat. Arb. Forum Dec. 8, 2003) (finding that Respondent registered a domain name primarily to disrupt Complainant’s competing business because Respondent had knowledge of Complainant and its mark at the time it registered a domain name identical to Complainant’s mark).

Additionally, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s MORGAN STANLEY mark when registering the <moganstanley.com> domain name because Complainant had registered the mark with the USPTO.  Moreover, the fact that Respondent uses the domain name to divert Internet users to competing financial services websites is further evidence that Respondent had actual or constructive knowledge of Complainant’s mark when registering the disputed domain name.  Therefore, Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

Furthermore, Respondent uses the disputed domain name to divert Internet users to competing financial services websites.  The Panel infers that Respondent receives click-through fees for redirecting Internet users to these competing websites.  Such commercial use of the domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods).

Moreover, the fact that Respondent’s domain name is merely a typosquatted variation of Complainant’s famous mark is further evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark. "Typosquatting, itself is evidence of bad faith registration and use 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 <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names were typosquatted versions of Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks. "Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of typosquatting, in which Respondent has engaged, has been deemed behavior in bad faith.").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <moganstanley.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  January 20, 2005

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2005/101.html