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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Morgan Stanley v Morrison [2005] DRS 2961 (6 November 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2961.html Cite as: [2005] DRS 2961 |
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1. Parties
Complainant: Morgan Stanley
Address: 1585 Broadway
New York
New York
Postcode: 10036
Country: US
Respondent: morrison
Address: 1 triq tal-hawli
birgu
birgu
Postcode: CSPO9
Country: MT
The domain names in dispute are:
On 13 September 2005 the Complaint was lodged with Nominet UK in accordance with the Nominet UK Dispute Resolution Service Policy (the "DRS Policy") and hard copies of the Complaint were received in full on the same date.
On 13 September 2005 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.
On 10 October 2005 no Response had been received from the Respondent by Nominet UK and the Complainant was advised accordingly.
On 20 October 2005 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 21 October 2005 James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure
The Complainant, incorporated in the State of Delaware in the USA, is one of the world's largest 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. It is listed on the New York Stock Exchange and on the Pacific Exchange. Its reported total revenues for the 2004, 2003 and 2002 financial years were US$39,549,000,000, US$34,980,000,000 and US$33,173,000,000 respectively.
The Complainant is also the registered proprietor of numerous trade marks and service 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 registration
There no information available about the Respondent except for that set out in the domain name registration details.
Complainant's Submissions
Addressing the Complainant's Rights in the MORGAN STANLEY name, trademark and service mark, the Complainant submits that the Complainant and its predecessors in title have continuously traded under and by reference to the MORGAN STANLEY name from at least as early as 1935. The Complainant's MORGAN STANLEY name and 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 newspapers, magazines and other printed publications, radio broadcasts, terrestial and satellite television broadcasts, and the Internet.
The Complainant is the owner of the abovementioned European Community Trade Mark (CTM) Registration No. 175950 and UK Trade Mark Registration No. 1465887 for the MORGAN STANLEY mark.
The Complainant submits that the UK market is one of the Complainant's largest markets globally, and the Complainant offers a range of consumer finance products, among other services in the UK. At the end of the 2004 financial year there were nearly 1.3 million MORGAN STANLEY Card credit cards in the UK. The Complainant's MORGAN STANLEY Card credit card has recently been advertised in the UK on the ITV and Channel 4 television channels in the month of August 2005. In support of these claims the Complainant has submitted various documents including copies of pages from (and/or linked from) the Complainant's websites at
The Complainant submits that in the hands of the Respondent, each of the domain names the subject of this Complaint,
The Complainant further submits that the Respondent's primary purpose in registering the domain names, and the subsequent use which the Respondent has made of the domain names, fall within, respectively, paragraphs 3(a)(i)(c) and 3(a)(ii) of the Policy.
The Complainant further submits that the Respondent registered the domain names on 26 June 2005, long after the Complainant established its Rights in the MORGAN STANLEY name and mark.
Disregarding the generic .co.uk suffix, each of the domain names
In respect of
The Complainant further submits that the domain names
The Complainant submits that its name is very well known in the UK as well as around the world, and the Respondent must have been aware of the Complainant's name and Rights when it chose the domain names
Addressing the Respondent's use of the domain names in dispute, the Complainant submits that the Respondent is using the domain names in issue as the address for two webpages, established at the
Addressing the alleged purpose and effect of the Respondent's use of the domain names in issue, the Complainant submits that the nature of the misspellings of the Complainant's name in each of the domain names 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 searching for the Complainant's UK website at
The links on the Respondent's webpages are stated to be selected by Sedo but the Complainant alleges that they are clearly included with the Respondent's full knowledge and consent. The Complainant submits that it is by no means certain that visitors to the Respondent's webpages will immediately realise that they have not reached the Complainant's website. The Respondent's webpages are clearly "branded"
The Complainant submits that visitors to the Respondent's webpages may react in a number of ways if and when they realise these are 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 web site(s). But they may instead click on the links on the Respondent's webpages to other financial service providers, particularly if they are potential customers rather than existing customers of the Complainant. Alternatively 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. Alternatively, and especially if they do not notice their error, they may think that the Complainant has a very amateurish website.
Whatever happens, 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 as well as to the Respondent and to result in financial or other detriment to the Complainant. The linked sites appear to pay to be listed, and it is difficult to imagine why they would do so, and how Sedo can provide its free service to domain name holders, unless visitors to the webpages were likely to click on the links.
The Complainant submits that this strongly suggests, therefore, that the Respondent registered the domain names in dispute primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)(c) of the DRS Policy), because the nature of the disruption which would inevitably occur would be highly likely to result in its own financial gain.
The Complainant submits that the same evidence shows that the Respondent is using the domain names 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 names are registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 3(a)(ii) of the DRS Policy).
The Complainant accepts that it does not have evidence of any particular instances of confusion and it is noted that paragraph 3(a)(ii) of the DRS Policy refers to a domain name having been used in way which has caused confusion. However, the Complainant submits that this is only one of a number of non-exhaustive examples of what may be an Abusive Registration, and it is in any event likely in the majority of cases that the Complainant would not become aware of confusion which occurs. The Complainant submits that in other Nominet UK DRS cases such as Nominet UK DRS Case No.02086 (carphonewarhouse.co.uk), experts have concluded, even in the absence of actual confusion, that on the balance of probabilities confusion will have occurred and would be likely to continue to occur in the future.
The Complainant alleges that it seems natural to conclude that the Respondent, in registering these domain names, intended there to be confusion, because there is no other reason for the webpages to exist and for people to visit them, and furthermore that confusion is bound to have arisen.
The Complainant further accepts that each Nominet UK DRS complaint turns on its own facts, and previous decisions are not binding precedents. Nevertheless, the Complainant submits that previous decisions strongly suggest that this type of typosquatting is likely to constitute an Abusive Registration. In this regard the Complainant cites for example, Nominet UK DRS Case No. 02086 (carphonewarhouse.co.uk), Nominet UK DRS Case No. 02549 (endsligh.co.uk), Nominet UK DRS Cases Nos. 02183/4/5 (dailmail.co.uk and others), Nominet UK DRS Case No. 1918/9 (allianceandleicster.co.uk and others) and Nominet UK DRS Case No. 02177 (accounttemps.co.uk).
The Complainant submits that this case falls clearly within both paragraphs 3(a)(i)(c) and 3(a)(ii) of the DRS Policy, these are just two of a list of non-exhaustive factors which may be evidence of an Abusive Registration. The definition of an Abusive Registration is set out in paragraph 1 of the Policy, and, on the facts presented above, the Complainant submits it is clear that both the original registrations of the domain names and the subsequent use made of them took and continue to take unfair advantage of and were and continue to be unfairly detrimental to the Complainant's Rights.
The Complainant submits that this view is further supported by the link from the Respondent's webpages to pornographic websites, as any association of the Complainant's name with such sites is likely further to seriously damage its reputation and goodwill. It is difficult to imagine any innocent explanation or legitimate reason as to the Respondent's choice of the domain names other than to take unfair advantage of, and/or to use it to the detriment of, the Complainant's Rights.
Respondent's Submissions
The Respondent has not filed any Response.
In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. that
i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
The Complainant has established that it has a world wide reputation and goodwill in the use of the name MORGAN STANLEY in the provision of financial services and is the owner of numerous registrations for the trademark and service mark MORGAN STANLEY throughout the world including 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 word mark Morgan Stanley in class 36, registered with effect from 1991.
Furthermore the Complainant owns and uses the gTLD Internet domain name
The Complainant's subsidiary company, Morgan Stanley International Limited, is registered as the proprietor of the
Each of the domain names in issue,
Abusive Registration
Given the reputation of the Complainant and the fact that the Respondent has chosen to register domain names that are so similar to the Complainants trademark and service mark, it must be inferred that these registrations were intended to cause confusion among users of the Internet between the Complainant's name and marks on the one hand and the domain names that are the subject of this Complaint on the other hand. It follows that on the balance of probabilities the Respondent has engaged in the practice of typo-squatting in each case.
A decision that the Respondent has engaged in typo-squatting, is fortified by the fact that there are two discrete registrations, each registered by the same Respondent and each having a minor,but different, variation of the Complainant's very well known name and mark. The Complainant's argument that in each case, the "misspelt" letter is situated next to the "correct" letter on a normal Qwerty keyboard, and this increases the likelihood of such a mistake being made is also very compelling.
In the circumstances, on the balance of probabilities the Respondent has registered these domain names for the purpose of unfairly disrupting the business of the Complainant and as such is a factor which is set out in the non-exhaustive list in paragraph 3(a)(i)(c) of the DRS Policy as potential evidence of Abusive Registration.
It follows that in respect of both registrations the Complainant has established the second element of the test set out in paragraph 2(a)(ii) of the DRS Policy and is entitled to succeed in this Complaint.
This Expert therefore directs that the domain names
______________________ ______________________
James Bridgeman Date: 6 November 2005
