Morganstanleyindividual.mobi, Morganstanleyfunds.mobi

The timeline behind morganstanleyindividual.mobi

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

How each disputed name was decided in this proceeding.

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. Kenneth Chung c/o Bethesda Properties LLC Claim Number: FA0708001052609 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 Kenneth Chung c/o Bethesda Properties LLC (“Respondent”), 10113 Edward Ave, Bethesda, MD 20814. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi>, registered with Godaddy.com, Inc. 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 Karl V. Fink (Ret.), as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2007. On August 1, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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@morganstanleyindividual.mobi and postmaster@morganstanleyfunds.mobi by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On September 11. 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark. 2. Respondent does not have any rights or legitimate interests in the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names. 3. Respondent registered and used the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Morgan Stanley, holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MORGAN STANLEY mark (Reg. No. 1,707,196 issued August 11, 1992). Complainant has used the MORGAN STANLEY mark in connection with the sale of financial and investment services. Complainant has over 600 offices in 28 countries under the MORGAN STANLEY mark. Respondent registered the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names on May 31, 2007. Respondent is not using the disputed domain names for any purpose. Both domain names simply resolve to a page indicating “[t]his .MOBI domain is parked free . . . .” 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 has established rights in the MORGAN STANLEY mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding “that Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”). Respondent’s <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names are confusingly similar to Complainant’s MORGAN STANLEY mark as they both use Complainant’s mark in its entirety and simply add the generic word “individual” or the descriptive word “funds” to the mark. The word “funds” is descriptive as Complainant is a financial institution. As panels have previously held, the addition of a generic word like “individual” or a descriptive word like “funds” does not sufficiently alter the mark to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Marriott Int’l, Inc. v. Wayne L. Nicewarner, FA 99692 (Nat. Arb. Forum Nov. 1, 2001) (finding that “the addition of the abbreviation for the word ‘corporation’… does not prevent the [domain names] from being confusingly similar to said mark. ‘Marriottcorp’ and ‘Marriottcorps’ are clearly confusingly similar to the mark MARRIOTT.”). Additionally, Respondent’s <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names add the generic top-level domain (“gTLD”) “.mobi” to the mark. The Panel finds that the addition of a gTLD is irrelevant to the determination of whether a mark is confusingly similar under Policy ¶ 4(a)(i). See 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant asserts that Respondent does not have rights or legitimate interests in the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names. Complainant’s assertion establishes a prima facie case, which shifts the burden from Complainant to Respondent to prove that it does have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007) (“Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). The Panel may assume that Respondent lacks rights or legitimate interests in this case as Respondent failed to respond to the Complaint. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will review all available evidence before determining whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). Complainant contends that Respondent is not using the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names and has not submitted evidence of demonstrable preparations to use either of the disputed domain names. The Panel finds that Respondent’s failure to use the disputed domain names is not a use in connection with 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). See Franzus Co. v. Cotner, FA 125365 (Nat. Arb. Forum Nov. 7, 2002) (determining that after the respondent’s failure to use the disputed domain name for five years, its “unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect of the domain name at issue”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”). Additionally, Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names. Respondent’s WHOIS information identifies Respondent as “Kenneth Chung c/o Bethesda Properties LLC.” Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Finally, Respondent’s failure to use the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names for any use since its registration is further evidence that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has registered but is not currently using the <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names, and has not provided any evidence of demonstrable preparations to use the disputed domain names. Therefore, Respondent’s nonuse of the disputed domain names since May 31, 2007 constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to use the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to use a domain name permits an inference of registration and use in bad faith). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 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 <morganstanleyindividual.mobi> and <morganstanleyfunds.mobi> domain names be TRANSFERRED from Respondent to Complainant. Honorable Karl V. Fink (Ret.), Panelist Dated: September 24, 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.