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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 Manley [2006] DRS 3215 (10 January 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3215.html Cite as: [2006] DRS 3215 |
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Morgan Stanley v Sara Manley
Decision of Independent Expert
Complainant: Morgan Stanley
Country: US
Respondent: Sara Manley
Country: UK
morganstaley.co.uk; morganstnley.co.uk ("the Domain Names")
The Complaint was lodged with Nominet on December 14, 2006. Nominet validated the Complaint and notified the Respondent of the Complaint on December 15, 2006 and informed the Respondent that she had 15 days within which to lodge a Response. No Response was received. On January 18, 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
Dawn Osborne, the undersigned, ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.
The Complainant is one of the world's largest financial services companies and is the owner of registered trade marks and goodwill in the name Morgan Stanley the use of which goes back to 1935.
The Respondent registered the Domain Names on 21 May 2005 and 12 March 2005. The Domain Names are parked with the free domain name parking service provided by Sedo and the relevant pages contain sponsored links to the web sites of a number of financial services companies not connected with the Complainant and to pornographic sites.
Complainant:
The substance of the Complaint is as follows:
1. The Complainant and its predecessors in title have continuously traded under the Morgan Stanley name since 1935.The Morgan Stanley name is well known to the public and enjoys substantial reputation and goodwill in the UK and elsewhere. The Complainant is also the registered proprietor of numerous trade marks and domain names which consist of or contain the Morgan Stanley name.
2. The Domain Names in the hands of the Respondent are abusive registrations.
3. The Respondent registered the Domain Names long after the Complainant established its rights in the Morgan Stanley name. The Complainant 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 she chose the Domain Names.
4. The Domain Names are virtually identical or very confusingly similar to the Morgan Stanley name and mark, as they are both minor misspellings of Morgan Stanley that merely omit, in each case, a single letter within the body of the name.
5. It is difficult to imagine any reason or innocent explanation for the choice of Domain Names other than an intention to take unfair advantage of and/or to use the Domain Names to the detriment of the Complainant's Rights.
6. The Respondent is using the Domain Names to connect to pages containing sponsored links to financial services not connected to the Complainant and pornography. Owners of domain names parked with Sedo receive payments based upon the number of visitors that click on sponsored links. Visitors that mistype the Complainant's domain name may be taken to the Respondent's pages and due to the similarity of the Domain Names to the Complainant's trade marks and the use of the Domain Names as headers on the relevant pages may not realise they are not on the Complainant's site or even if they do they may go to another third party provider of financial services instead. It is difficult to see why the sponsors would pay for links and Sedo could provide the service free unless visitors were likely to click on the links.
7. The Respondent has not been authorised by the Complainant to register the Domain Names or use the Complainant's name or trade mark.
8. The Respondent has registered the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant, because the nature of the disruption would be likely to result in its financial gain.
9. The Respondent is using the Domain Names in a way which is extremely likely to confuse or has confused people and businesses into believing that the Domain Names are connected to the Complainant. The Complainant does not have any actual evidence of confusion, but it is likely in the majority of cases that it would not become aware of confusion that occurs. On the balance of probabilities confusion will have occurred and would be likely to continue to occur in the future. It would be natural to conclude that the Respondent intended there to be confusion for there is no other reason for the site to exist and for people to visit them and so confusion is bound to have arisen.
10. The Respondent's separate registration of the Domain Names each being a minor but different misspelling of the Complainant's name shows a pattern of registration of domain names which correspond to well known names or marks in which the Respondent has no apparent rights and the Domain Names are part of that pattern.
11. Typosquatting is grounds for a finding of abusive registration in itself.
12. It is clear that both the original registration of the Domain Names and the subsequent use made of them took/take unfair advantage of and were/are unfairly detrimental to the Complainant's rights. The association of the Complainant's name with pornography is likely to seriously damage reputation and goodwill.
Respondent:
No response was received.
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Names and, secondly, that the Domain Names, in the hands of the Respondent, are Abusive Registrations (as defined in paragraph 1 of the Policy).
Complainant's Rights
In this case the first limb of that task is straightforward. The Complainant is the proprietor of registered trade marks for Morgan Stanley, a name which has been used since 1935. The Domain Names are obvious misspellings of the Complainant's trade mark, each omitting only one letter from the Complainant's full name. As such the Expert finds that the Complainant has rights in respect of a name or mark, which is similar to the Domain Names.
Abusive Registration
This leaves the second limb. Are the Domain Names, in the hands of the Respondent, Abusive Registrations? Paragraph 1 of the Policy defines "Abusive Registration" as:-
"a Domain Name which either:
i. 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
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. Potentially relevant 'factors' in paragraph 3 are to be found in subparagraph i, ii and iii, which read as follows:
i "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;"
B. [Intentionally omitted]
C. "for the purpose of unfairly disrupting the business of the Complainant;"
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."
iii"The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of the pattern."
The Expert is of the opinion that the Respondent's registration and use of the Domain Names is indicative of relevant abusive conduct.
The Domain Names are misspellings of the Complainant's famous trade mark. The Expert agrees that the choice of two domain names both missing only one letter from the Complainant's trade mark indicates that the Respondent did indeed have the Complainant in mind when he registered the Domain Names and indicates that the names were registered as part of a pattern of domain names reflecting the Complainant's well known trade marks. However, even if only one of the Domain Names had been registered the Expert would be satisfied due to the use made of the Domain Names that the registration was made with a view to "renting" (albeit indirectly) the usage of the Domain Names to the Complainant's competitor's and/or disrupting the Complainant's business for profit taking undue advantage of the Complainant's goodwill and rights in the name Morgan Stanley.
There is no obvious reason why the Respondent might be said to have been justified in registering the Domain Names and she has not responded to the Complaint.
Further the use of the names to point to pages containing links to competitors of the Complainant and pornography for profit demonstrates that the Respondent has used the Domain Names in such a way as to take unfair advantage and to cause undue detriment to the Complainant. It is accordingly unnecessary for the Expert to decide if confusion has been caused by the usage made of the Domain Names by the Respondent.
Accordingly, the Expert finds that the Domain Names are Abusive Registrations within the definition of that term in paragraph 1 of the Policy.
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert directs that the Domain Names,morganstaley.co.uk and morganstnley.co.uk be transferred to the Complainant.
____10 January 2006_____________
Dawn Osborne
