Msdwclientserv.com

The timeline behind msdwclientserv.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Morgan Stanley v. Wan-Fu China, Ltd. Claim Number: FA0702000924567 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 Wan-Fu China, Ltd. (“Respondent”), P.O. Box CB-11901, Nassau BS. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <msdwclientserv.com>, registered with Capitoldomains, LLC. 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. Honorable Paul A. Dorf (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2007. On February 26, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <msdwclientserv.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2007 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@msdwclientserv.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 30, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <msdwclientserv.com> domain name is confusingly similar to Complainant’s MSDW and CLIENTSERV marks. 2. Respondent does not have any rights or legitimate interests in the <msdwclientserv.com> domain name. 3. Respondent registered and used the <msdwclientserv.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Morgan Stanley, has continuously and extensively used the MSDW mark in connection with financial and investment services since it merged with Dean Witter, Discover & Co. in 1997. The mark is an abbreviation of the names of the two entities, Morgan Stanley and Dean Witter (“MSDW”) and Complainant holds the registration for the <msdw.com> domain name. Complainant has registered the MSDW mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,451,420 issued May 15, 2001) and also with the United Kingdom Patent Office (Reg. No. 2,168,310 issued June 2, 1998), Canadian Intellectual Property Office (Reg. No. TMA530,947 issued August 9, 2000), and the European Union’s Office for Harmonization in the Internal Market (Reg. No. 845,966 issued October 4, 1999). Complainant has also registered the CLIENTSERV mark with the USPTO (Reg. No. 2,322,252 issued February 22, 2000). Respondent’s <msdwclientserv.com> domain name, which it registered on December 28, 2006, resolves to a pay-per-click website with links to competing financial and investment services companies. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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’s valid trademark registrations for the MSDW and CLIENTSERV marks sufficiently demonstrate its rights in the marks for purposes of satisfying Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainants federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world). Respondent’s <msdwclientserv.com> domain name contains two of Complainant’s registered marks in their entirety. In Nintendo of America Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000), the panel determined that the <pokemonpikachu.com> domain name was confusingly similar to the complainant’s POKEMON and PIKACHU marks because the respondent combined both marks in order to form the domain name. Likewise, Respondent has also combined Complainant’s registered marks into one domain name, which renders the <msdwclientserv.com> domain name confusingly similar to Complainant’s MSDW and CLIENTSERV marks pursuant to Policy ¶ 4(a)(i). See Seagate Tech. LLC v. Zhanfeng, FA 635276 (Nat. Arb. Forum Mar. 10, 2006) (finding that the <seagate-maxtor.com> domain name was confusingly similar to the complainant’s SEAGATE and MAXTOR marks). The Panel concludes that Complainant has sufficiently satisfied this element of the Policy. Rights or Legitimate Interests In determining whether or not Respondent has rights or legitimate interests in the <msdwclientserv.com> domain name, it is initially Complainant’s responsibility to make a prima facie case that Respondent lacks rights and legitimate interests in the contested domain name pursuant to Policy ¶ 4(a)(ii). Once Complainant has done so, the burden effectively shifts to Respondent to demonstrate that it has rights or legitimate interests in the contested domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations). In cases where a respondent fails to respond, as is the case in the present proceeding, the Panel presumes that Respondent has no rights or legitimate interests in the domain name in dispute. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). Nevertheless, the Panel will still examine whether Complainant has made a prima facie case in support of its contentions that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c). The only evidence that the Panel has of Respondent’s identity is the WHOIS information, which lists “Wan-Fu China, Ltd.” as the registrant of the <msdwclientserv.com> domain name. Consequently, the Panel cannot conclude that Respondent is commonly known by the domain name in dispute and must find that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name). Moreover, Respondent’s use of the <msdwclientserv.com> domain name as a pay-per-click website where it presumably earns click-through fees for each consumer it diverts to other websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The panels in both Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) and Carey International, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) found that a respondent’s use of a confusingly similar domain name to host links to a complainant’s competitors did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel in this case thus finds that Respondent has no rights or legitimate interests in the contested domain name pursuant to either Policy ¶ 4(c)(i) or ¶ 4(c)(iii). The Panel concludes that Complainant has sufficiently satisfied this element of the Policy. Registration and Use in Bad Faith By maintaining a pay-per-click website with links to Complainant’s competitors in the financial and investment services industry, Respondent has registered and is using the <msdwclientserv.com> domain name to disrupt Complainant’s business, providing evidence of bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed doamin name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Furthermore, Respondent’s registration and use of the <msdwclientserv.com> domain name also represents bad faith according to Policy ¶ 4(b)(iv). In Allianz of America Corporation v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees. The Panel in BPI Communications, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) found bad faith registration and use for such purposes as well. As Respondent is also redirecting Internet users interested in Complainant’s financial and investment services to a pay-per-click website with links to Complainant’s competitors, Respondent is taking advantage of the confusing similarity between the contested domain name and Complainant’s registered MSDW and CLIENTSERV marks in order to profit from the goodwill associated with these marks. The Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel concludes that Complainant has sufficiently satisfied this element of the Policy. 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 <msdwclientserv.com> domain name be TRANSFERRED from Respondent to Complainant. Honorable Paul A. Dorf (Ret.), Panelist Dated: April 13, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.