Generic Top Level Domain Name (gTLD) Decisions

MORGAN STANLEY DEAN WITTER & CO.
COMPLAINANT,

vs.

SYED HUSSAIN
CPIC Net
RESPONDENT.

DECISION
Forum File No.: FA0004000094449

   The above-entitled matter came on for an administrative hearing on

June 5, 2000 before the undersigned three-judge panel on the Complaint of MORGAN STANLEY DEAN WITTER CO., hereafter “Complainant”, against CPIC Net, c/o SYED HUSSAIN, hereafter “Respondent”.  Kenneth A. Adler, Brown Raysman Millstein Felder & Steiner LLP, 120 West 45^th Street, New York, New York 10036 represents Complainant. Respondent did not appear.

Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name: MSDWPRIVATEEQUITY.COM and MSDWPE.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: CPIC NET

Date of Domain Name Registration: January 5, 2000; on “Hold” status.

Date Complaint filed: April 12, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a)^{[1] and Rule 4(c): April 17, 2000.}

Due date for a Response: May 8, 2000; Respondent did not appear pursuant

to Rule 5(a).

            After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent and it was received on April 17, 2000 in compliance with Rule 2(a), and the administrative proceeding commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced.  Respondent did not appear as required by Rule 5(a).

            On January 5, 2000, Respondent registered the domain name MSDWPRIVATEEQUITY.COM and MSDWPE.COM with Domain Name Registrar Network Solutions, Inc.  On April 14, 2000, the Domain Name Registrar Network Solutions, Inc. verified that Respondent is the Registrant for the domain names MSDWPRIVATEEQUITY.COM and MSDWPE.COM and that further by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

                The evidence is undisputed. Based on the record the following findings are made:

1. Complainant provides financial services in the international market.

2. Morgan Stanley provided such services beginning in 1933; Dean Witter provided such services from 1924.

3. Complainant holds and has used in international commerce the trademarks MSDW & Co. (Serial Number 75-534,563) and MSDW.COM (Serial Number 75-546,046).

4. Complainant has had for fifteen years within MSDW & Co. private equity services in which some $4 billion of its clients’ capital has been invested in more than 160 companies around the world.

5. Respondent registered MSDWPRIVATEEQUITY.COM and MSDWPE.COM on January 5, 2000.

6. These domain names are identical to and confusingly similar to the marks in which Complainant has prior and superior legitimate rights and interests.

7. Respondent has shown no legitimate right or interest in the domain names MSDWPRIVATEEQUITY.COM and MSDWPE.COM.

8. The evidence permits an inference that Respondent registered the domain names MSDWPRIVATEEQUITY.COM and MSDWPE.COM in bad faith.  Evidence of Respondent’s bad faith includes the following:

(a). Respondent knew or should have know that MORGAN STANLEY DEAN WITTER & Co., a world-renowned entity, owned the rights to its business name and marks derived from the initials of its business name.

(b) Respondent without legitimate interest or right to do so registered the domain names of another to prevent that entity from using it and in order to resell it to that entity or a competitor at a valuable consideration in excess of any out-of-pocket expenses related to the domain name.

(c) Respondent engaged in a pattern of making such registrations.

PRAYER FOR RELIEF

Complainant’s prayer for relief requests that the domain names MSDWPRIVATEEQUITY.COM and MSDWPE.COM be transferred from Respondent to Complainant, pursuant to Paragraph 4(i) of ICANN’s Uniform Domain Name Dispute Resolution Policy.

CONCLUSIONS

            The undersigned certify that they have acted independently as a three—judge panel and that they have no known conflicts of interest to serve as the Arbitrators in this proceeding.  Having been duly selected, and being impartial, the undersigned make the following findings and conclusions:

            To prevail, the Complainant has the burden of establishing the three factors set out in ICANN’s Uniform Domain Name Dispute Resolution Policy at Paragraph 4(a)(i),(ii) and (iii). Complainant has the burden of showing that (i) Respondent’s domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) Respondent’s domain name was registered and used in bad faith. (Emphasis added.)

1. Complainant met its burden of establishing that Respondent’s domain name is identical to or confusingly similar to Complainant’s mark, pursuant to Paragraph 4(a)(i).

2. Complainant met its burden of establishing that Complainant had prior legitimate interests in and right to use MSDWPRVATEEQUITY.COM and MSDWPE.COM in its commercial dealings.  Respondent did not show a right or legitimate interest in respect to these domain names

3. Complainant met its burden of establishing that Respondent acted in bad faith.  The evidence allows inferences that Respondent,

(a) Contrary to ICANN’s Domain Name Dispute Resolution Policy Paragraph 4(b)(i), Respondent knowingly registered a domain name to which Respondent knew another had a prior interest or right and Respondent did so primarily in order to sell it to Complainant or a competitor of Complainant for a valuable consideration in excess of any out-of-pocket expenses that Respondent has had relative to the domain names. Respondent offered to sell the domain name to Complainant and ignored Complainant’s cease and desist letter, and .

(b) Contrary to ICANN’s Domain Name Dispute Resolution Policy, Paragraph 4(b)(ii), Respondent knowingly registered the domain names MSDWPRIVATEEQUITY.COM and MSDWPE.COM to prevent Complainant, the owner of the mark MSDW & Co., from reflecting its mark in a corresponding domain name, and

(c) Contrary to ICANN’S Domain Name Dispute Resolution Policy, Paragraph 4(b)ii, Respondent has engaged in a practice of acquiring such domain names for sale.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECT THAT THE DOMAIN NAMES MSDWPRIVATEEQUITY.COM AND MSDWPE.COM REGISTERED BY RESPONDENT CPIC NET BE TRANSFERRED TO COMPLAINANT MORGAN STANLEY DEAN WITTER & CO.

DATED:  May 31, 2000 by Hon. Carolyn Marks Johnson (Ret.), Hon. H. Curtis Meanor and Hon. Nelson A. Diaz.

                                    _______________________________________

                                    Honorable Carolyn Marks Johnson

                                    Assigned District Judge and Arbitrator.

                                    For the Unanimous Panel