NOMINET UK DISPUTE RESOLUTION SERVICE

DRS 03054

DECISION OF INDEPENDENT EXPERT

Morgan Stanley –v- Digi Real Estate Foundation

1.	Parties
	Complainant	:	Morgan Stanley
Country		:	US

Respondent	:	Digi Real Estate Foundation
Country		:	PA

2.	The Domain Names
morgenstanley.co.uk and moganstanley.co.uk.

3.	Procedural Background
3.1	On 19 October 2005 the Complaint was lodged with Nominet in accordance with the Nominet Dispute Resolution Service Policy (the “Policy”) and hard copies of the Complaint were received in full by Nominet on the following day.
3.2	On 20 October 2005 Nominet validated the Complaint and on the same day it 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 Procedure”) had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.
3.3	On 15 November 2005 no Response had been received from the Respondent by Nominet and the Complainant was advised accordingly.  
3.4	On 23 November 2005 Nominet received the relevant fee for these proceedings from the Complainant and Nominet proceeded to select and appoint an expert.
3.5	On 25 November 2005 Bob Elliott was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the Procedure 

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.  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 set down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint”.  
4.2	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”.  
4.3	There is no evidence before the Expert to indicate the presence of exceptional circumstances.  The Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

5.	The Facts
5.1	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. 
5.2	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.
5.3	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. 
5.4	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.
5.5	The Complainant also owns the top level domain name registration morganstanley.com as well as numerous variations of it in the .com and other gTLDs as well as numerous similar ccTLD domain name registrations. The Complainant’s subsidiary company, Morgan Stanley International Ltd, is registered as the proprietor of the domain name morganstanley.co.uk, although the website established at the www.morganstanley.co.uk Internet address is operated by and/or on behalf of the Complainant.
5.6	There is no information available about the Respondent except for that set out in the domain name registration details.

6.	The Parties’ Contentions
		Complainant’s Submissions
	Rights

6.1	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. 
6.2	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, over the radio on television, and over the Internet. 
6.3	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.
6.4	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 press clippings and copies of pages from (and/or linked from) the Complainant’s websites at www.morganstanley.com and www.morganstanley.co.uk.
6.5	The Complainant submits that in the hands of the Respondent, each of the Domain Names the subject of this Complaint, morgenstanley.co.uk and moganstanley.co.uk, are Abusive Registrations as defined in paragraph 1 of the Policy.
6.6	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 and that other activities of the Respondent fall within paragraphs 3.a.iii and 3.a.iv of the Policy. 
6.7	The Complainant further submits that the Respondent registered the Domain Names in July 2005, long after the Complainant established its Rights in the MORGAN STANLEY name.
6.8	Disregarding the generic .co.uk suffix, each of the Domain Names morgenstanley.co.uk and moganstanley.co.uk is virtually identical, or very confusingly similar, to the Complainant’s MORGAN STANLEY name and mark, as they are both minor misspellings of the Complainant’s MORGAN STANLEY mark.

	Abusive Registration
Paragraphs 3.a.iii and 3.a.iv of the DRS Policy (Pattern of Registrations/False Contact Details)
6.9	The Complainant has attached to its Complaint a private investigator’s report into the Respondent’s activities.  This shows that the Respondent is the registrant of 368 .uk domain names including amerricanexpress.co.uk, capital0ne, britiishairways.co.uk, dolceandgabana.co.uk, easyjeet.co.uk, fedexpress.co.uk and nikefootwear.co.uk.  The Complainant submits that this is evidence of an Abusive Registration under paragraph 3.a.iii of the Policy in that it shows a clear pattern of registrations 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.  In further support of this submission (and of an Abusive Registration generally), the Complainant also exhibits copies of three domain name arbitration decisions against the Respondent, one under the Policy and two relating to .com domain names.
6.10	The Complainant submits that the report and the previous decisions, combined with other evidence also strongly suggest that the Respondent has given false contact details to Nominet.  A letter sent by the Complainant’s Solicitors to the Respondent on 1 August 2005 by Internationally Signed For air mail was returned, apparently undelivered, to the Complainant’s Solicitors, and another copy of the same letter, sent by ordinary air mail, was neither returned nor replied to.  

Paragraphs 3.a.i.C and 3.a.ii of the Policy (Unfair disruption/Confusion)
6.11	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.  The Complainant asserts that it is difficult to imagine any reason for the choice of Domain Names another than an intention to take unfair advantage of, and/or to use the Domain Names to the detriment of, the Complainant’s Rights.
6.12	The Complainant alleges that the links on the Respondent’s webpages are either selected by the Respondent or are listed with the Respondent’s full knowledge and consent, and 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 or one which is associated with the Complainant.  The Complainant submits that the Respondent’s webpages are clearly “branded” morgenstanley.co.uk and moganstanley.co.uk (which look very similar to morganstanley.co.uk) and there is no obvious indication that the websites are not connected to the Complainant.  Moreover, a number of the references and links are to the Complainant’s financial services and products which means again that it is not immediately obvious that the webpages are not connected to, or in any way authorised by, the Complainant.
6.13	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) or click on a link to the Complainant’s website. But they may not be aware of any mistake and 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. 
6.14	Whatever happens, given the fiercely competitive nature of the financial services market, this is likely to result in financial and/or other benefit to the Complainant’s competitors (as well as to the Respondent, who is likely to benefit financially from visitors who click through the various links) and to result in financial (and/or other) detriment to the Complainant. 
6.15	The Complainant submits that this strongly suggests, therefore, that the Respondent registered the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3.a.i.C of the Policy), because the nature of the disruption which would inevitably occur would be highly likely to result in its own financial gain. 
6.16	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 Policy).
6.17	The Complainant accepts that it does not have evidence of any particular instances of confusion. However, the Complainant alleges that it seems natural to conclude that the Respondent, in registering the 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 submits that it is in any event likely in the majority of cases that the Complainant would not become aware of confusion which occurs. 
6.18	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 typo-squatting 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). 
6.19	The Complainant submits that this case falls clearly within  paragraphs 3.a.iii, 3.a.iv, 3.a.i.C and 3.a.ii of the Policy, but that 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/take unfair advantage of and were/are unfairly detrimental to the Complainant’s Rights. 
6.20	The Complainant submits that 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
6.21	The Respondent has not filed any Response. 

7.	Discussion and Findings:
General
7.1	In order to succeed in these proceedings, paragraph 2.b of the 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 namely 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
7.2	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. 
7.3	Furthermore the Complainant owns and uses the gTLD Internet domain name morganstanley.com as well as numerous variations of it in the .com and other gTLDs and furthermore owns and uses numerous similar ccTLD Internet domain name registrations. 
7.4	The Complainant’s subsidiary company, Morgan Stanley International Limited, is registered as the proprietor of the morganstanley.co.uk domain name, and the website at the www.morganstanley.co.uk address is operated by and/or on behalf of the Complainant.
7.5	Each of the Domain Names in issue, morgenstanley.co.uk  and moganstanley.co.uk  is clearly similar to the Complainant’s MORGAN STANLEY trade mark and consequently the Complainant has succeeded in establishing the first element of the test set out in paragraph 2.a.i of the Policy in respect of both registrations. 

Abusive Registration
7.6	The Complainant has addressed four of the non-exhaustive list of factors set out in the Policy as potential evidence of Abusive Registration.  The Expert proposes to take each in turn.

Paragraph 3.a.i.C (“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily … for the purpose of unfairly disrupting the business of the Complainant”).
7.7	The Expert considers that it is inconceivable that the Respondent will have been unaware of the Complainant’s name and Rights when it chose the Domain Names.  The fact that the Domain Names are used for internet webpages which contain links to the websites of a number of other financial service providers, including both the Complainant and other providers, and the “branding” of those webpages using the misspellings will undoubtedly result in visitors to those webpages reacting in a way which is likely to result in financial and/or other detriment to the Complainant, and therefore to disrupt the Complainant’s business unfairly.  The Expert concludes that the Complainant has made it out its case in relation to this head.

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”).
7.8	Although it is true that there are no actual incidences of confusion put forward by the Complainant, the nature of this type of typo-squatting is to seek to take advantage of typing errors by internet users and the Expert accepts the Complainant’s assertion that it is 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 other than for people to visit them.  The Expert also accepts that confusion is bound to have arisen and that the Complainant would not necessarily become aware of any confusion which occurs.  The Expert finds that this head of complaint is also made out.

Paragraph 3.a.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 corresponds to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern”).
7.9	The private investigator’s report commissioned by the Complainant appears to establish clearly on the balance of probabilities such a pattern of registrations, and given that there has been no response by the Respondent, the Expert finds that this head is also made out.

Paragraph 3.a.iv (“it is independently verified that the Respondent has given false contact details to [Nominet]”).
7.10	This head of complaint requires what is termed “independent verification”.  The Complainant relies effectively upon making deductions from the private investigator’s report, the previous decisions against this Respondent, and the return of and failure to reply to non-replied correspondence sent on the Complainant’s behalf.  The private investigator’s report reports that searches of Panamanian telephone bases and Panamanian corporate listings show no reference to any companies by the name of Digi Real Estate Foundation.  In addition, the Expert notes the observation by the Expert in Nominet UK DRS decision number 2177 that the postcode provided appears to be one which follows a format used in parts of the Holloway Road, North London, in the United Kingdom (rather than Panama), and that in that case (as in this) the submission by Nominet of the Complaint to the Postmaster at the Domain Name was met with a delivery failure report.  In all the circumstances, the Expert agrees that the evidence strongly suggests that the Respondent has given false contact details to Nominet, and in the absence of any response by the Respondent, finds that this head is, also, made out on the balance of probabilities.

8.	Decision
8.1	The Expert finds that the Complainant has Rights in the name MORGAN STANLEY, which is similar to both of the Domain Names.  The Expert further finds that the Domain Names in the hands of the Respondent, are Abusive Registrations.
8.2	The Expert therefore decides that the Domain Names should be transferred to the Complainant.

………………………………………..                  Date: 29 November 2005

Bob Elliott