Domain name – Domain name dispute resolution policy – Identical  - Deceptively similar - No legitimate purpose – Bad faith registration –  Valuable consideration – Domain Name warehousing.

Complainants' registered marks have become famous in connection with mortgage banking, securities brokerage and a panoply of financial services.  Complainant registered the trademark MSD” and MSDW.COM for MSDW Online Inc., a subsidiary of Complainant that functioned as an online brokerage firm and had its own web site at www.msdwonline.com.  Respondent is in the domain name warehousing business and has registered domain names identical to or deceptively similar to well known trademarks, including the domain name in issue, MSDWONLINE.NET.

Held, Name transferred to Complainant

Respondents’ domain name is identical to the Complainant’s registered and famous trademark.  There is no evidence that Respondent ever used the domain name at issue for any legitimate purpose. Respondent appears to be merely “parking” the web site at www.msdwonline.net for purposes of sale.  It appears the domain name was registered purely to be sold to the Complainant or to a competitor of Complainant.Respondent’s repeated efforts to sell the domain name at issue to Complainant for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain clearly establish the bad faith of Respondent.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
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James A. Carmody, 
Panelist: - 

REGISTRAR AND DISPUTED DOMAIN NAME(s)

 The domain name at issue is “MSDWONLINE.NET,” registered with Network Solutions, Inc. (“NSI”).PANELISTS Hon. Robert S. Brandt, Hon. H.Curtis Meanor, Hon. James A. Carmody, Chairman PROCEDURAL HISTORYComplainant filed its Complaint with the National Arbitration Forum ("The Forum") on May 11, 2000. On May 13, 2000, NSI confirmed by e-mail to The Forum that the domain name “MSDWONLINE.NET” is registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.On May 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. Respondent has not filed a Response to the Complaint, timely or otherwise. 

Complainant properly demanded a panel of three arbitrators. The Forum appointed this panel in accordance with its Rules.Having reviewed the Complaint, as the only pleading in the file,  the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under the Rules and that the case is ready to be decided. 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.

RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.  

PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the Respondent has registered a domain name that is identical or deceptively similar to its trademarks “MSDW” and “MSDW.COM,” registered with the United States Patent and Trademark Office under Ser. 75-534,563 and Ser. 75-546,046, respectively. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the Respondent has registered and is using the domain name in bad faith.        

B. Respondent
The Respondent has not filed a Response or otherwise appeared although duly notified of the commencement of this proceeding.  Accordingly, all reasonable inferences of fact in the allegations of the Complaint will be deemed to be true.FINDINGSThe Complainant is the owner of the federally registered trademarks “MSDW” and “MSDW.COM,” as well as predecessor trademarks for Morgan Stanley and Dean Witter which companies merged in 1997 to form MDSW & Co.  The marks have become exceedingly well known, in fact famous, in connection with mortgage banking, securities brokerage and a panoply of financial services.    
A subsidiary of Complainant is MSDW Online Inc., an online brokerage firm with its own web site at www.msdwonline.com. Along with the Complaint, the Complainant provided various exhibits, reflecting the services of Complainant, the identity of the apparent principal of Respondent and various efforts of the Respondent to sell the domain name at issue to the Complainant for amounts substantially in excess of out of pocket costs associated with acquisition of the domain name.The Respondent appears to be in the domain name warehousing business and has more than 50 names registered, including other domain names identical to or deceptively similar to well known trademarks other than MSDW.   Respondent appears to be merely “parking” the web site at www.msdwonline.net for purposes of sale.  Email correspondence in the form of negotiations or demands from Respondent to Complainant make it clear that Complainant (owner of www.msdwonline.com) was the target when the .net version of the domain was acquired.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 SimilarIt is not disputed that the Respondents’ domain name is identical to the Complainant’s registered and famous trademark.  Rights or Legitimate InterestsThere is no evidence whatsoever that Respondent has ever used the domain name at issue for any legitimate purpose.  It appears that the domain name was registered purely to be sold to the Complainant or to a competitor of Complainant.

Bad Faith
The panel finds that Respondent’s repeated efforts to sell the domain name at issue to Complainant for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain clearly establish the bad faith of Respondent.

DECISION

The Complainant having proven all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted and registration of the domain name “MSDWONLINE.NET” will be transferred from Respondent to Complainant.

Robert S. Brandt, 
Judge (Ret.)H. Curtis Meanor,
Judge (Ret.)James A. Carmody,
Judge (Ret.), Chairman
Dated: July 7, 2000