DECISION

Morgan Stanley v. Buy This Domain a/k/a Domains for Sale Inc.

Claim Number:  FA0306000165134

PARTIES

Complainant is Morgan Stanley, New York, NY (“Complainant”) represented by Baila H. Celedonia of Cowan, Liebowitz & Latman PC.  Respondent is Buy This Domain a/k/a Domains for Sale Inc., Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <deanwitters.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 24, 2003; the Forum received a hard copy of the Complaint on July 17, 2003.

On July 30, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <deanwitters.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. 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 July 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 19, 2003, 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@deanwitters.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 Forum transmitted to the parties a Notification of Respondent Default.

On August 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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. The domain name registered by Respondent, <deanwitters.com>, is confusingly similar to Complainant’s DEAN WITTER family of marks.

2. Respondent has no rights to or legitimate interests in the <deanwitters.com> domain name.

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

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

FINDINGS

Complainant, Morgan Stanley, is the holder of the DEAN WITTER family of marks.  Complainant holds United States Patent and Trademark Office Registration No. 1,425,933 for the DEAN WITTER mark (registered on the Principle Registry on Jan. 20, 1987) and Registration No. 2,522,916 for the MORGAN STANLEY DEAN WITTER mark (registered on the Principle Registry on Dec. 25, 2001), as well as numerous other registrations and pending applications for marks containing the DEAN WITTER mark and similar registrations and applications outside the United States.  In addition, the DEAN WITTER family of marks has been developed and used by Complainant since at least as early as April 1924.

Complainant helped shape the financial services industry in the United States and throughout the world.  Founded in 1924, Dean Witter has provided services and products for individual investors.  In 1997, the Morgan Stanley Group, Inc. and Dean Witter, Discover & Co. (“Dean Witter”) merged to form Morgan Stanley Dean Witter & Co., which shortened its name to Morgan Stanley in 2002. 

Respondent registered the <deanwitters.com> domain name May 2, 2003.  Respondent is not a licensee of Complainant and has not ever been authorized by Complainant to use the DEAN WITTER family of marks or to register the <deanwitters.com> domain name.

The website formerly associated with the <deanwitters.com> domain name directed Internet traffic to the website located at the <abortionismurder.org> domain name.  The website associated with the <abortionismurder.org> domain name displays graphic images and videos of aborted fetuses, as well as anti-abortion text.  As of June 25, 2003, Respondent posted an offer to sell the <deanwitters.com> domain name for $985. 

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the DEAN WITTER family of marks through registration on the Principal Register of the United States Patent and Trademark Office, as well as through continuous use of the DEAN WITTER family of marks in commerce since 1924.  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); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding Complainant has common law rights in the mark FISHTECH, which it has used since 1982).

The domain name registered by Respondent, <deanwitters.com>, is confusingly similar to Complainant’s DEAN WITTER mark.  Respondent adds the letter “s” and the top-level domain “.com” to Complainant’s entire DEAN WITTER mark.  Such minor additions are not sufficient to create a domain name that differs from Complainant’s DEAN WITTER mark under Policy ¶ 4(a)(i).  See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established.

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights in the mark contained in its entirety in the domain name that Respondent registered.  Complainant asserts that Respondent has no such rights. Respondent did not rebut Complainant’s allegations and did not file a Response.  Therefore, Respondent failed to show that it has rights and legitimate interest in the <deanwitters.com> domain name.  Furthermore, when Respondent does not challenge Complainant’s allegations, the Panel accepts as true all reasonable assertions set forth in the Complaint.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

 

Nothing in the record indicates that Respondent is commonly known by the <deanwitters.com> domain name.  In addition, Respondent has not been licensed or authorized by Complainant to use the DEAN WITTER family of marks or to register the <deanwitters.com> domain name.  Since the Panel has no evidence to the contrary, the Panel reasonably infers that Policy 4(c)(ii) does not apply to Respondent.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Moreover, Respondent tarnished Complainant’s image by using the <deanwitters.com> domain name to redirect unsuspecting Internet users to a politically charged website that features graphic images of aborted fetuses and anti-abortion language.  Respondent also offered the  <deanwitters.com> domain name for sale.  Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used the domain name in bad faith. As of June 25, 2003, Respondent was offering the <deanwitters.com> domain name for sale for $985., an amount that exceeds reasonable out-of-pocket expenses.  Therefore, the Panel concludes that Respondent’s intent to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket expenses is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

Furthermore, prior to offering the <deanwitters.com> domain name for sale, Respondent used the disputed domain name to divert Internet traffic to a website associated with the <abortionismurder.org> domain name.  Respondent’s use of the Complainant’s mark in this manner was calculated to affect the goodwill associated with Complainant’s DEAN WITTER family of marks without any permission to do.  Respondent thrust Complainant into a debate that had nothing to do with Complainant’s commercial area.  Respondent redirected Internet users seeking to contact Complainant to a website that advances Respondent’s view of an issue that has highly polarized society.  Respondent also used Complainant’s mark to display graphic photographs of aborted fetuses. Using Complainant’s mark in this manner constitutes bad faith.  See Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding bad faith because “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).  

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established.

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 <deanwitters.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: September 9, 2003.

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