ELIGIBILITY REQUIREMENTS DISPUTE RESOLUTION POLICY

DECISION

Morgan Stanley v. Bailey Bross a/k/a Bailey & Bross Inc.

Claim Number: FA0407000304684

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 Bailey Bross a/k/a Bailey & Bross Inc. (“Respondent”), Ringelnatzstr. 6, Dietzenbach, Germany 63128.

REGISTRAR AND DISPUTED REGISTERED NAME

The Registered Name at issue is <morganstanley.name>, registered with Schlund + Partner AG.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 26, 2004; the Forum received a hard copy of the Complaint on July 28, 2004.

On July 29, 2004, Schlund + Partner AG confirmed by e-mail to the Forum that the Registered Name <morganstanley.name> is registered with Schlund + Partner AG and that Respondent is the current registrant of the Registered Name.  Schlund + Partner AG has verified that Respondent is bound by the Schlund + Partner AG registration agreement and has thereby agreed to resolve registered name disputes brought by third parties in accordance with the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).

On August 9, 2004 a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 30, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”)

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 September 9, 2004, pursuant to ERDRP Rule 6(b), the Forum appointed Louis E. Condon as the single Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibilities under Paragraph 2(a) of the ERDRP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ERDRP, ERDRP Rules, the Forum’s ERDRP 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 Panel issue a Defensive Registration for the contested domain name.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that Respondent registered <morganstanley.name> in violation of the Eligibility Requirements for the following reasons:

1.            Respondent’s legal name is not “Morgan Stanley.”

2.            Respondent owns no trademark or service mark rights to the name “Morgan Stanley.”

3.              Respondent is not commonly known by the name “Morgan Stanley.”

Complainant asserts that the domain name <morganstanley.name> is identical to the textual or word elements of Complainant’s MORGAN STANLEY mark and therefore has established rights in the Registered Name <morganstanley.name>.

B. Respondent

No Response was received.

FINDINGS

Complainant owns numerous registrations for its MORGAN STANLEY mark with various worldwide governmental authorities.  For example, Complainant owns registration number 1,707,196 with the United States Patent and Trademark Office, which was registered on Aug.11, 1992, in connection with “investment banking,” among other services.

           

Respondent registered the domain name <morganstanley.name> on June 6, 2004 and is now using the disputed domain name to advertise financial advisory services.

DISCUSSION

Paragraph 15(a) of the ERDRP 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 ERDRP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the ERDRP Rules.

Paragraph 4(b) of the ERDRP requires that Complainant prove each of the following elements in order to establish that the Registered Name was registered in violation of the Eligibility Requirements and obtain an order that a Registered Name should be cancelled:

(1) the name corresponding to the Registered Name is not the legal name of Respondent; and

(2) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and

(3) the Respondent has not been commonly known by the name corresponding with the Registered Name.

Respondent’s Eligibility

Legal Name

The evidence in the record fails to demonstrate that Respondent’s legal name is “Morgan Stanley.”  The available evidence that bears directly upon Respondent’s legal name is the WHOIS registration information, which lists Respondent’s name as Bailey Bross.  Expressio unius est exclusio alterius.  Therefore, the Panel finds that “Morgan Stanley” is not the legal name of Respondent and Complainant has established paragraph 4(b)(i) of the ERDRP.

            Name of Fictional Character

No evidence on record suggests, and Respondent has not come forward with any evidence that establishes, that Respondent owns any trademark or service mark rights for a character by the name of “Morgan Stanley.”  The record contains evidence that a search was conducted of the Trademark Offices of Germany, the European Union, the United States and the International Register, which did not reveal any registrations or applications of the MORGAN STANLEY mark on behalf of Respondent.  Therefore, Complainant has established paragraph 4(b)(ii) of the ERDRP. 

            Commonly Known As

As previously stated, there is no evidence in the record to suggest that Respondent is commonly known as or by “Morgan Stanley” and Respondent has produced no such evidence to establish the same.  Therefore, Complainant has established paragraph 4(b)(iii) of the ERDRP. 

Complainant’s Eligibility

Complainant requests that the Panel issue a Defensive Registration for the contested Registered Name to Complainant  pursuant to ERDRP 5(f)(i)(C).  Therefore, Complainant must meet the Common Defensive Registration Eligibility Requirements.

As one Panel has stated:

According to Paragraph 2(b) of the Eligibility Requirements for Phase I Defensive Registrations of the .NAME Restrictions, the name must correspond to a valid and enforceable trademark or services (sic) mark registration having national effect that issued prior to April 16, 2001, in which the Complainant has rights.  See Bayerische Motorenwerke AG. v. Dariusz Herman, DNAME 2004-00001 (WIPO Mar. 29, 2004).

In effect, Complainant must prove that the name is identical to the textual or word elements of Complainant’s trademark or service mark. Complainant has provided the Panel with evidence of its registrations of its MORGAN STANLEY mark in the United States, Germany, and the European Union that were issued prior to April 16, 2001.  The MORGAN STANLEY mark is identical to the disputed domain name and thus, Complainant satisfies the requirements of paragraph 5(f)(i)(C) of the ERDRP.

DECISION

Complainant having established, as required by the ERDRP Policy, that <morganstanley.name> was registered in violation of the Eligibility Requirements; and  furthermore, Complainant having established ERDRP Policy Eligibility Requirements for the issuance of a Defensive Registration for the contested domain name, the Panel concludes that the requested relief should be granted.

     

Accordingly, it is hereby ordered that a defensive registration in the Registered Name is granted to the Complainant in accordance with ERDRP 5(f)(i)(C).

Louis E. Condon, Panelist

Dated: September 23, 2004

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