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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Morgan Stanley, Re [2005] DRS 2959 (8 November 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2959.html Cite as: [2005] DRS 2959

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Nominet UK Dispute Resolution Service DRS 02959 Re: Morganstaniey.co.uk Decision of Independent Expert

1. Parties:

Complainant:

Morgan Stanley

Country:

US

Respondent:

Unknown

Address:

Unknown

Postcode:

Unknown

Country:

Unknown

2. Disputed Domain Name:

morganstaniey.co.uk (the "Domain Name")

3. Procedural Background:

The Complaint in this case was lodged with Nominet UK ("Nominet") on 13 September 2005. Nominet validated the Complaint on 19 September 2005 and attempted to identify and notify the Respondent, giving them 15 working days within which to lodge a response. As part of this process Nominet attempted to update the contact details of the registrant of the Domain Name. They attempted to contact the registrant and attempted to inform them that they were in breach of paragraph 4.1 of the Terms and Conditions for the Registration of a .uk Domain Name, and to ask them to supply an up-to-date contact address. As of October 13, 2005, no response was received to either notification. In the absence of an identifiable Respondent the Complainant chose to continue the DRS application ex parte and on 26 October 2005, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (the "Policy").

The undersigned, Andrew Murray (the "Expert"), was formally appointed on 2 November 2005. The Expert has formally confirmed to Nominet that he knows of no reason why he cannot properly accept the invitation to act as an expert in this case and further confirmed that he knows of no matters which might appear to call into question his independence and/or impartiality.

4. Outstanding Formal/Procedural Issues (if any):

This is, to the Expert's knowledge the first application to be heard ex parte. The question is whether it is competent for the expert to give a decision under the Dispute Resolution Service in such circumstances.

There appears to be nothing in either the Policy ("the Policy) or Procedure ("the Procedure") for the conduct of proceedings under the Dispute Resolution Service to prevent such an action. By paragraph 1 of the Policy and Procedure the Respondent is described as "the person in whose name or on whose behalf a Domain Name is registered and against whom a Complainant makes a complaint." This does not presuppose that the name and contact details of the Respondent must be established and as such suggests that ex parte applications may be possible. Further by paragraph 3(c)(iii) of the Procedure the Complainant is required to "set out any of the Respondent's contact details which are known to the Complainant". This suggests that it is not the duty of the Complainant to identify the Respondent's full contact details. The duty of Nominet is set out at paragraph 2 of the Procedure where Nominet undertake to send the Complaint to the Respondent using some or all of the following means:

i) sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in our Domain Name register database entry for the Domain Name in dispute;

ii) sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to;

A.       postmaster@; or

B.       if the Domain Name resolves to an active web page (other than a generic page which we conclude is maintained by an ISP for parking Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or

iii) sending the complaint to any addresses provided to us by the Complainant under paragraph 3(b)(iii) so far as this is practicable.

I have seen the correspondence file in relation to this complaint and I am satisfied that on 19 September 2005 Nominet attempted to contact the Respondent in accordance with paragraph 2 by mail and electronic mail. Both attempts failed. I believe Nominet therefore discharged its duty under paragraph 2 and that all attempts were made to identify and contact the Respondent. I therefore have no reason to doubt that the Respondent has been properly notified of the Complaint in accordance with paragraph 2 of the Procedure.

Paragraph 15(b) of the Procedure provides, inter alia, that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint." There is no evidence before the Expert to indicate the presence of exceptional circumstances. The absence of the identity of the Respondent does not, in the Expert's opinion, qualify as such. To find in the alternative would afford a higher level of protection to a Respondent who deliberately hides his/her identity by giving false and/or incomplete contact details (in breach of paragraph 4.1 of the Terms and Conditions for the Registration of a .uk Domain Name) over those who simply fail to respond. This would seem to be a breach of natural justice and accordingly the Expert will now proceed to a Decision on the complaint notwithstanding the absence of an identifiable Respondent.

The lack of a response does not entitle the Complainant to a default judgement. The Complainant must still prove its case to the required degree. The Expert will evaluate the Complainant's evidence on its own merits and will draw reasonable inferences from it in accordance with paragraph 12(b) of the Procedure.

Paragraph 15(c) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure ....... , the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

Generally, the absence of a Response from the Respondent does not, in the Expert's view, entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit. In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the next following section are indeed facts.

5. The Facts

The Complainant, incorporated in the State of Delaware in the USA, is one of the world's largest diversified financial services companies, acting for individual, institutional and investment banking clients. The Complainant was formed in 1997 as Morgan Stanley Dean Witter & Co. following a merger between Morgan Stanley & Co., established in New York in 1935, and Dean Witter & Co., established in San Francisco in 1924. The Complainant changed its name to Morgan Stanley in 2002.

The Complainant has over 600 offices and approximately 54,000 employees in 28 countries around the world, including the United Kingdom (UK). It is listed on the New York Stock Exchange and on the Pacific Exchange.

Almost half of the Complainant's institutional business is outside the USA. The UK is one of the Complainant's largest markets globally, and the Complainant offers, amongst other services in the UK, a range of consumer finance products. At the end of the 2004 financial year there were nearly 1.3 million Morgan Stanley Card credit cards in the UK

The Complainant and its predecessors in title or interest have continuously traded under and by reference to the Morgan Stanley name from at least as early as 1935. The Morgan Stanley name and the Complainant's Morgan Stanley marks are very well known to the public, including ordinary consumers as well as institutional investors, and are important assets of the Complainant which enjoy significant and substantial goodwill.

The Complainant's business has been, and continues to be, promoted under and by reference to the Morgan Stanley name across a wide range of advertising media, including in newspapers, magazines and other printed publications, over the radio, on terrestrial and satellite television, and over the Internet. The Complainant's Morgan Stanley Card credit card has recently been advertised in the UK on the ITV and Channel 4 television channels.

The Complainant is also the registered proprietor of numerous trade marks around the world which consist of, or contain, the words "Morgan Stanley". These include European Community Trade Mark (CTM) Registration No. 175950 for the word mark Morgan Stanley in classes 9, 16 and 36, registered with effect from 1996, and UK Trade Mark Registration No. 1465887 for the word mark Morgan Stanley in class 36, registered with effect from 1991.

The Complainant also owns the top level domain name morganstanley.com as well as numerous variations of it in the .com and other gTLDs and numerous similar country code domain name registrations. The Complainant's subsidiary company, Morgan Stanley International Ltd, is registered as the proprietor of the morganstanley.co.uk domain name, although the www.morganstanley.co.uk website is operated by and/or on behalf of the Complainant.

6. The Parties' Contentions


Complainant


The Complainant submits that the Domain Name in dispute is identical or similar to a name or mark in which it has rights and that the Domain Name in the hands of the Respondent is an Abusive Registration.

The Respondent registered the Domain Name on 15 May 2005, long after the Complainant established its Rights in the Morgan Stanley name. Disregarding the generic .co.uk suffix, the Domain Name morganstaniey.co.uk is virtually identical, or very confusingly similar, to the Complainant's Morgan Stanley name and mark, as it is a minor misspelling of the Complainant's Morgan Stanley mark that merely substitutes the letter l with the letter i. The Domain Name is similarly virtually identical, or very confusingly similar, to the Complainant's subsidiary company's domain name morganstanley.co.uk.

The Respondent must have been aware of the Complainant's name and Rights when it chose the Domain Name. It is difficult to imagine any reason for the choice of Domain Name other than an intention to take unfair advantage of, and/or to use the Domain Name to the detriment of, the Complainant's Rights. Respondent's Use of Domain Name.

The Respondent is using the Domain Name as the address for an Internet website called MorganStanIey.co.uk which describes itself as the no. 1 credit card comparison resource on the net. The site appears to consist of a lengthy home page which also contains links to the websites of a number of financial service providers including, as well as the Complainant, Virgin, Capital One, NatWest and, the Royal Bank of Scotland.

The nature of the misspelling of the Complainant's name in the Domain Name is such that some Internet users searching for the Complainant's website and/or business by reference to the Morgan Stanley name, and in particular for the Complainant's UK website at www.morganstanley.co.uk, are likely, through accidentally typing the letter i rather than l, to be directed to the Respondent's webpage at www.morganstaniey.co.uk. The misspelt letter is situated very near to the correct letter on a normal Qwerty keyboard, which increases the likelihood of such a mistake being made and also strongly suggests that this is the Respondent's intention.

Visitors who mistakenly arrive at the Respondent's website are not likely to realise quickly, if at all, that it is not a website of the Complainant. The Respondent's webpage is "branded" at the top as MorganStanIey (with the "misspelt" letter "i" looking more like the letter "l") and there is no obvious indication that the website is not the Complainant's. Whilst there is a statement that the site is a credit card comparison resource, the featured Card of the Month (and the first card specifically referred to) is the Morgan Stanley credit card. It is therefore likely that many visitors to the site will continue to believe that the site is connected to the Complainant, perhaps one which purports to provide independent advice about different providers' credit cards while in fact reviewing them less favourably than the Complainant's own, or perhaps one that is just very amateurish.

Some visitors may of course eventually realise that the Respondent's site is not connected to the Complainant. If they are existing customers of the Complainant, and if they notice their error, they may re-enter the correct address for the Complainant's website(s). But they may instead click on the links on the Respondent's webpages to other financial service providers, particularly if they are potential rather than existing customers of the Complainant (e.g. potential customers for credit cards who may be willing to shop around). Or they may simply decide that the Complainant does not have a website aimed specifically at people in the UK and instead search for the sites of other UK financial services providers. Whatever happens, then given the fiercely competitive nature of the financial services market, this is likely to result in financial (or other) benefit to the Complainant's competitors and financial (or other) detriment to the Complainant. This strongly suggests, therefore, that the Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)(C) of the Policy).

The same evidence shows that the Respondent is using the Domain Name in a way which is extremely likely to confuse, and to have confused, people and/or businesses into believing, at least initially, that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 3(a)(ii) of the Policy).

Each DRS complaint does of course turn on its own facts, and previous decisions are not binding precedents. Nevertheless, previous decisions do strongly suggest that this type of typo-squatting is likely to constitute an Abusive Registration: see, for example, DRS Nos. 02086 (carphonewarhouse.co.uk), 02549 (endsligh.co.uk), 02183/4/5 (dailmail.co.uk and others), 1918/9 (allianceandleicster.co.uk and others) and 02177 (accounttemps.co.uk).

Respondent's Response

No response was received.

7. Discussion and Findings:

General

According to paragraph 2 of the Policy, in order to succeed in this complaint, the Complainant has to prove to the Expert that, on the balance of probabilities:


i. the Complainant has Rights (as defined in paragraph 1 of the Policy) in respect of name or mark which is identical or similar to the disputed domain name; and

ii. the disputed domain name is an Abusive Registration (as defined in paragraph 1 of the Policy).

These matters must be proven by the Complainant, notwithstanding the failure by the Respondent to respond.  The effect of the Respondent's default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent's non-compliance as he considers appropriate.

Complainant's Rights

Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question. In this case, the Complainant relies upon both its registered and unregistered rights in the mark "Morgan Stanley". The Complainant has a series of trade mark registrations at the UK Trade Marks Registry and at the Community Trade Marks Office in the term "Morgan Stanley". In addition, the Complainant claims, and has provided evidence to substantiate, that it has built up considerable goodwill and reputation in the brand "Morgan Stanley".  It is clearly a highly successful brand with 1.3 million Morgan Stanley Card credit cards in circulation in the UK at the end of 2004.

The Expert is satisfied that the Complainant has rights in respect of the mark "Morgan Stanley" which is sufficiently similar to the Domain Name (disregarding, for these purposes, the generic domain suffix).

Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.

Abusive Registration

Paragraph 1 of the Policy defines "Abusive Registration" as:-

"a Domain Name which either:

was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

Under paragraph 3(a) of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant has indicated that they believe they may make out a claim under paragraph 3(a)(i)(C):

"The Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."

And under paragraph 3(a)(ii):

"Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant"

I would like to take these two claims in reverse order as it seems that the claim under paragraph 3(a)(ii) is stronger than that under paragraph 3(a)(i)(C). This seems to be a straightforward case of so-called typosquatting: where a deliberate misspelling of a well-known name or mark is used to attract web users to the Respondent's website. In relation to this the Complainant has directed the Expert to several previous Nominet DRS decisions involving typosquatting. In DRS 02086 (carphonewarhouse.co.uk and thecarphonewarhouse.co.uk) the Expert had little difficulty in finding that:

"it is likely that a substantial proportion of people arriving at the websites operated under the Domain Names by the Respondent (having made a minor spelling error by omitting the 'e' in the middle of 'warehouse'), will be confused into believing that the websites are operated or authorised by the Complainant. Obtaining evidence of such confusion is always very difficult, and the fact that the Complainant has not been able to do so does not, in my opinion, mean that such confusion has not occurred. Rather, my conclusion is that, on the balance of probabilities, such confusion will have occurred and would be likely to continue to occur in the future."

Similarly in DRS 02549 (endsligh.co.uk), the Expert found that "On classic 'bait and switch' principles, it is clear that the Domain Name has been used in a manner which has taken unfair advantage of and been unfairly detrimental to the Complainant's Rights, while in DRS 00821 (yahho.co.uk) the Expert found "the evidence attached by the Complainant regarding a complaint from an individual who accessed the Respondent's Website via a typographical error indicates how the Domain Name may be confused with the Complainant's sites by a user making a typographical error" to be indicative of confusion under paragraph 3(a)(ii). It would appear that this Complaint fits with the pattern of these previous typosquatting actions. Particularly persuasive in this case is the reasoning of the Expert in DRS 02086 (carphonewarhouse.co.uk and thecarphonewarhouse.co.uk) who noted that the Complainant need not demonstrate actual confusion, merely the likelihood of confusion occurring. Like the Expert in that case, I find that on the balance of probabilities, such confusion will have occurred and would be likely to continue to occur in the future. I therefore find that the Complainant succeeds in their claim under paragraph 3(a)(ii).

Having found the Complainant to have made out a prima facia case under the Policy the burden under paragraph 4 now shifts to the Respondent to demonstrate their use is not an Abusive Registration. The Expert having found the Respondent has a case to answer, the Respondent must make that answer. Here the Respondent has failed to answer and therefore cannot rebut the presumption of Abusive Registration.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy on the basis that it is being used in a manner which takes unfair advantage of the Complainant's rights.

8. Decision:

In light of the foregoing findings, namely that the Complainant has rights in respect of a name which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, morganstaniey.co.uk, be transferred to the Complainant.

Andrew Murray Date: 8 November 2005