DECISION

Morgan Stanley v. Albert Jackson

Claim Number:  FA0403000244092

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 Albert Jackson (“Respondent”), P.O. Box 2014, George Town, Grand Cayman, KY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <morganstanleydw.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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 (the "Forum") electronically on March 8, 2004; the Forum received a hard copy of the Complaint on March 10, 2004.

On March 9, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <morganstanleydw.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 March 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 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@morganstanleydw.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 April 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <morganstanleydw.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY DEAN WITTER mark.

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

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

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

FINDINGS

The Morgan Stanley Group, Inc. was founded in 1933 and has been an international leader in investment banking and an innovator of financial services and products.  Dean Witter, Discover & Co. (“Dean Witter”) was founded in 1924 and has provided financial services and products for individual investors.  In 1997, Morgan Stanley Group, Inc. merged with Dean Witter to form Morgan Stanley Dean Witter & Co.  In 2002, the company changed its name to Morgan Stanley.  One of Morgan Stanley’s affiliates is Morgan Stanley DW, Inc., a retail broker-dealer of securities.  In light of the foregoing, Complainant now owns the MORGAN STANLEY and DEAN WITTER families of marks.

The MORGAN STANLEY mark has been used by Complainant and it’s predecessors-in-interest since at least as early as 1935.  Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) on August 11, 1992 (Reg. No. 1,707,196).  The mark is used in connection with “investment banking services; financial services in the nature of underwriting, distribution, and trading of securities; financial services in the nature of merger, acquisition, restructuring, and other corporate finance activities; stock brokerage and research services; investment management and advice; and financial services in the nature of trading futures, options, foreign exchange, and commodities, in class 36.”

The DEAN WITTER mark has been used by Complainant and it’s predecessors-in-interest since at least as early as 1924.  Complainant registered the mark with the USPTO on January 20, 1987 (Reg. No. 1,425,933).  The mark is used in connection with “financial services namely, providing stock brokerage services, investment banking services, investment research services and advisory services in connection therewith, in class 36.”

Complainant also owns the MORGAN STANLEY DEAN WITTER mark, which has been used by Complainant and it’s predecessors-in-interest since at least as early as 1998.  Complainant registered the mark with the USPTO on December 25, 2001 (Reg. No. 2,522,916).  The mark is also used in connection with “financial services namely, providing stock brokerage services, investment banking services, investment research services and advisory services in connection therewith, in class 36.”

Either directly or through related companies, Complainant is the owner of the domain names <morganstanley.com>, <deanwitter.com>, and <morganstanleydeanwitter.com>.

Respondent registered the disputed domain name <morganstanleydw.com> on July 23, 2003.  Respondent uses the domain name to operate a website that provides links to third-party websites that offer financial services including: credit card services, brokerage services, and legal services relating to securities and investment fraud.

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

Registration of a mark with a governmental authority is sufficient to confer rights in a complainant under Policy ¶ 4(a)(i).  In this case, Complainant has registered the marks MORGAN STANLEY, DEAN WITTER, and MORGAN STANLEY DEAN WITTER with the USPTO.  Therefore, Complainant has established rights in the preceding marks under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”).

The incorporation of an abbreviated version of a third-party’s mark in a domain name is sufficient to establish that a domain name is confusingly similar to the third-party’s mark.  Here, the disputed domain name, <morganstanleydw.com>, incorporates the first two words of Complainant’s MORGAN STANLEY DEAN WITTER mark in their entirety.  Respondent has merely abbreviated the latter two words, “dean witter,” by appending “dw” to the domain name.  Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s MORGAN STANLEY DEAN WITTER mark. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself.”); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint and, therefore, the Panel finds that Respondent lacks rights to and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent has registered a domain name, which is confusingly similar to Complainant’s MORGAN STANLEY DEAN WITTER mark, to host a website that offers services that compete with those offered by Complainant under its mark. Such use has consistently been found not to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is such use a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Complainant has asserted that Respondent is not commonly known by the disputed domain name <morganstanleydw.com>.  Respondent has failed to rebut this assertion.  Therefore, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply 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 Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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").

Furthermore, Complainant has not authorized Respondent to use its MORGAN STANLEY DEAN WITTER mark. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using a domain name, which is confusingly similar to Complainant’s MORGAN STANLEY DEAN WITTER mark, to host a website that offers financial services that compete with those offered by Complainant under its mark, presumably for commercial gain.  Internet users are likely to be confused as to the relationship between the content hosted at Respondent’s website and Complainant’s business because the services offered by Complainant and the services marketed by Respondent are nearly identical.  The fact that Respondent uses a domain name confusingly similar to Complainant’s mark creates even more confusion and evidences Respondent’s intention to cause confusion with Complainant’s mark as to the source of the services offered at the domain name.  As a result, Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’ mark as to the source of its website. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Given the long-standing use and fame of Complainant’s MORGAN STANLEY, DEAN WITTER, and MORGAN STANLEY DEAN WITTER marks, it is likely that Respondent had knowledge of Complainant’s rights in these marks prior to Respondent’s registration of the disputed domain name.  The fact that these marks were registered with the USPTO provided constructive notice to Respondent of Complainant’s rights in the marks. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”).

Complainant has established Policy ¶ 4(a)(iii).

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

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

Dated:  April 19, 2004

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