Nominet UK Dispute Resolution Service

 
Morgan Stanley -v- John Morrison Nominet UK Dispute Resolution Service DRS 03189 Morgan Stanley and John Morrison Decision of Independent Expert

1. PARTIES:

Complainant: Morgan Stanley

US

Respondent: John Morrison

MT

2. DOMAIN NAME:

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

3. PROCEDURAL BACKGROUND:

3.1. A hard copy of the Complaint was received in full by Nominet on 8 December 2005. Nominet validated the Complaint and notified the Respondent of the Complaint.

3.2. No Response was received by the Respondent and therefore informal mediation was not possible. On 17 January 2006 the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").

3.3. On 19 January 2006, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:

4.1. The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2. 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 the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".

4.3. Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. There do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

5. THE FACTS:

5.1. The Complainant is Morgan Stanley.

5.2. The Respondent is John Morrison. The Respondent registered the Domain Name on 11 September 2005.

5.3. The Complainant is a corporation incorporated in the Estate of Delaware in the USA and is one of the world's largest diversified financial services companies, acting for individual, institutional and investment banking clients.

5.4. The Complainant was formed in 1997 as Morgan Stanley Dean Witter & Co. following a merger between Morgan Stanley & Co. and Dean Witter & Co. and changed its name to Morgan Stanley in 2002.

5.5. The Complainant has over 600 offices and approximately 54,000 employees in 28 countries around the world including the UK.

5.6. The Complainant is listed on the New York Stock Exchange and on the Pacific Exchange. It's reported total revenues for the financial years 2004, 2003 and 2002 were USD39,549,000,000, USD34,980,000,000 and USD33,173,000,000 respectively.

5.7. The UK is one of the Complainants 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.

5.8. 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. Since its launch in the UK in 1999, the Complainant's Morgan Stanley Card credit card has been extensively advertised in the UK including on television.

5.9. The Complainant and its subsidiaries own a number of Domain Names including Morganstanley.com and Morganstanley.co.uk.

5.10. The Complainant is the registered proprietor of a number of trade marks worldwide. These include US Trade Mark Registration No. 1, 707, 196 (showing a date of first use in commerce of 1935), Community Trade Mark Registration No. 175950 (registered with effect from 1996) and UK Trade Mark Registration No. 1465887 (registered with effect from 1991) all for the word mark Morgan Stanley.

5.11. The Domain Name is currently being pointed towards a web page at www.sedoparking.com/morganstanlry.co.uk. This page is headed MORGANSTANLRY.CO.UK and consists of a number of sponsored links to the websites of a number of financial service providers including both the Complainant's credit card and a number of its competitors. There are also a number of related "links" including one marked "adult" which in turn provides links to, apparently, pornographic websites.

5.12. The web page to which the Domain Name links is part of the Sedo Domain Name parking service which operates such that owners of Domain Names parked with Sedo receive payments from Sedo based upon the number of visitors to the web pages who click on the advertised links listed there.

5.13. The Complainant does not have evidence of any particular incidence of confusion caused by the use of the Domain Name.

5.14. The Complainant was successful in an earlier DRS decision – DRS02961 in having the domain names morgamstanley.co.uk and morganstanlet.co.uk transferred to it from the Respondent.

1. THE PARTIES' CONTENTIONS:

The parties' contentions can be summarised as follows:

Complainant

6.1. In its Complaint, the Complainant makes the following submissions:

6.1.1. The Domain Name is identical or similar to a name or mark in which the Complainant has Rights;

6.1.2. The Domain Name in the hands of the Respondent is an Abusive Registration;

6.1.3. The Complainant's submission that it has Rights in the name "Morgan Stanley" is based on both its unregistered and registered rights. Firstly, the Complainant says that because of the length of time it has been trading and the extent of the promotions and advertisements which it has carried on under the name Morgan Stanley the name Morgan Stanley will have become well known to the public, including to ordinary consumers as well as institutional investors and as a consequence enjoys significant and substantial goodwill. Secondly, the Complainant points to its trade mark registrations which include registrations for the words "Morgan Stanley" in the US, the EC and the UK.

6.1.4. The Domain Name is virtually identical to, or very confusingly similar, to the name Morgan Stanley as it is a minor misspelling of Morgan Stanley that merely substitutes the letter e with the letter r.

6.1.5. It is difficult to imagine any reason for the choice of Domain Name other than intention to take unfair advantage of, and/or to use the Domain Name to the detriment of the Complainant's Rights. The Complainant's 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 Name.

6.1.6. 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 to be directed to the Respondent's web page. The "misspelled" letter is situated next to the "correct" letter on a normal "qwerty" keyboard, which increases the likelihood of such mistake being made and also strongly suggests that this is the Respondent's intention

6.1.7. The links on the Respondent's web page are stated to be provided by Sedo but are clearly included with the Respondent's full knowledge and consent.

6.1.8. It is by no means certain that visitors to the Respondent's web page will immediately realise that they have not reached the Complainant's web site. The Respondent's web page is clearly "branded" Morgan Stanlry (which looks very similar to the Complainant's name) and the difference would be likely not to be noticed by some visitors to the web page, especially if they were expecting to visit the Complainant's website. There is no obvious indication that the website is not connected to the Complainant.

6.1.9. Visitors to the Respondent's web page may react in a number of ways

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;

they may instead click on the links on the Respondent's web page to other financial service providers, particularly if they are potential rather than existing customers of the Complainant who may be more willing to shop around;

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;

or (especially if they do not notice their error) they may think that the Complainant has a very amateurish website

6.1.10. 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 financial (or other) detriment to the Complainant. It therefore follows that the Domain Name has been registered primarily for the purpose of unfairly disrupting the business of the Complainant because of the nature of the disruption which will inevitably occur it would be highly likely to result in the Respondent's financial gain.

6.1.11. Additionally, the Respondent's use of the Domain Name 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.

6.1.12. The Complainant does not have evidence of any particular instances of confusion but invites the Expert to conclude that on the balance of probabilities confusion will have occurred and will be likely to continue to occur in the future. The Complainant also contends that in this case it seems natural to conclude that the Respondent intended there to be confusion, because there is no other reason for the web page to exist and for people to visit it, and that confusion is bound to have arisen.

6.1.13. The Complainant cites a number of DRS decisions indicating that this type of "typo-squatting" is likely to constitute an Abusive Registration.

6.1.14. The Complainant also cites DRS number 02961 in which it recovered the domain names "morgamstanley.co.uk" and "morganstanlet.co.uk" from the Respondent and submits that this is evidence of an Abusive Registration in that it shows a pattern of registration of Domain Names which correspond to well known or marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern.

6.1.15. Both the original registration of the Domain Name and the subsequent use of it took/take unfair advantage of and were/are both detrimental to the Complainant's Rights.

Respondent

6.2. The Respondent has not responded to the Complaint.

2. DISCUSSIONS AND FINDINGS

General

Under clause 2 of the Policy the Complainant is required to show, on the balance of probabilities that:

7.1. It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

7.2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

7.3. The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.

7.4. The Policy defines Rights as including but not being limited to, "….rights enforceable under English law…..". This has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and I think that must be the correct approach.

7.5. The Complainant has provided evidence of its use of the name Morgan Stanley and it is also common knowledge that Morgan Stanley is an extremely well known name in the financial services arena. Additionally, the Complainant holds registered trade marks in this name all of which go back several years.

7.6. In the circumstances I have no difficulty in finding that the Complainant has, on the balance of probabilities, Rights in the name "Morgan Stanley".

7.7. Ignoring the first and second level suffixes, as I must do, I must now decide whether the name in which the Complainant has Rights i.e. "Morgan Stanley" is identical or similar to the Domain Name i.e. "Morgan Stanlry". I am in no doubt at all that the two names are similar. They differ only by one letter which does not change the overall character of the name and indeed I agree with the Complainant's submission that the Domain Name is most likely to be viewed as a common misspelling of the name in which the Complainant has Rights.

Abusive Registration

7.8. Having concluded that the Complainant has Rights in a name which is identical to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. An Abusive Registration is defined in the Policy as a Domain Name which either:

(a) 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

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

7.9. This definition allows me to consider whether a Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of registration / acquisition.

7.10. Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:

"3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A 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 as a blocking registration against a name or mark in which the Complainant has Rights; or

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 that pattern;

iv. It is independently verified that the Respondent has given false contact details to us; or

v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and / or renewal of the domain name registration.

b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration."

7.11. The Complainant submits that the Respondent's registration of the Domain Name falls within paragraph 3(a) (i) (C) of the policy in that it was made for the purpose of unfairly disrupting the business of the Complainant and that it's subsequent use falls foul of paragraphs 3(a) (ii) and paragraph 3(a) (iii) in that the Respondent's use of the Domain Name has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant and/or that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of Domain Names which correspond to well known names or Trade Marks in which the Respondent has no apparent Rights and the Domain Name is part of that pattern respectively. The Complainant also reminds me that the factors which may give rise to a finding of an Abusive Registration set out in paragraph 3 are a non-exhaustive list of factors and I should also have regard to the definition of an Abusive Registration which I have set out above at paragraph 7.8 of this decision.

7.12. It is self-evident that the registration of the Domain Name and particularly the use of the Domain Name to link to a site such as the "Sedo" site will lead to business being diverted away from the Complainant and therefore being unfairly disruptive to the business of the Complainant. It must also be the case that the use of the Domain Name will confuse the public into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

7.13. The Domain Name is blatantly a misspelling of the Complainant's name and has clearly been chosen for that very reason – I can conceive of no other reason for the Domain Name to be registered and in the absence of any Response that must be the case. The Domain Name has been fairly cynically chosen to take advantage of the fact that when typing in the Complainant's name on a "qwerty" type keyboard the computer user may well type the penultimate letter of the Complainant's name as an r and not an e given that these two letter are adjacent to each other on a qwerty keyboard.

7.14. I also accept the Complainant's submission that although some computer users will automatically realise they have mistyped the Complainant's name and have reached the wrong site I do not think that it is unlikely that others will be genuinely confused and believe that either the site to which the Domain Name links is the Complainant's site or that the Complainant does not have a site directed towards UK business. I have noted that the Complainant has not been able to produce any evidence of confusion. It is enough that there is a likelihood, on the balance of probabilities, that confusion is occurring or will occur in the future.

7.15. The third point which the Complainant expressly raises is that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of Domain Names which correspond to well known names or Trade Marks in which the Respondent has no apparent Rights. As evidence of this Complainant points to its previous DRS case against the Respondent which as I have already said involved the Respondent registering two variations of Complainant's name. There is therefore evidence that the Respondent has registered at least three variations of the Complainant's name. I have no difficulty in find that this third occurrence of the Respondent registering a name which differs in only insignificant detail to the Complainant is enough to be a pattern of registrations within the meaning of paragraph 3 (a) (iii) of the Policy.

7.16. There is one other point which I would like to raise, albeit that it is not raised expressly by the Complainant and albeit that I do not need to make a ruling on this point in order to decide this case. This point is whether the Complainant is a person who falls within paragraph 3 (c) of the Policy.

Paragraph 3 (c) reads as follows

"There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in 3 (three) or more Dispute Resolution Service cases in the 2 (two) years before the Complaint was filed."

7.17. It is worth noting that a Robert Morrison has been the unsuccessful Respondent in at least 4 DRS cases. These are DRS 02775, DRS 03021, DRS 03028 and DRS 03035. In all of these cases Mr. Robert Morrison gives his address as being an address in Malta different to that given by the Respondent in this case and in the previous Morgan Stanley typo squatting case, DRS 02961. It seems to me extremely likely that the Respondent in this case who gave his name as John Morrison here and simply "Morrison" in the earlier Morgan Stanley typo-squatting case and who has an address in Malta is likely to be either the same or closely connected to the Robert Morrison who has been the Respondent in these four earlier DRS cases.

7.18. I do not need to decide whether they are the same in this case and indeed the Complainant has not asked me to. I do however raise this point here because it may well be that the next complainant who finds himself faced with a Mr. Morrison, with an address in Malta, who has registered that complainant's company name or a variation of it may wish to avail himself of the provisions of paragraph 3 (c) of the Policy.

3. DECISION

8.1. In the circumstances, I find that the Complainant has proved on the balance of probabilities that it has Rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore decide that the Domain Name should be transferred to the Complainant.

……………………………..

NICK PHILLIPS

2nd February 2006