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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Morgan Stanley v Morgan Stanley Latin America LL C [2005] DRS 3070 (13 December 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/3070.html Cite as: [2005] DRS 3070

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Nominet UK Dispute Resolution Service

DRS 3070

Morgan Stanley v. Morgan Stanley Latin America, LL C

Decision of Independent Expert

1. Parties

Complainant: Morgan Stanley

Country: US

Respondent: Morgan Stanley Latin America, LL C

Country: GB

2. Domain Name

The domain name in dispute is morganstanley-la.co.uk ("the Domain Name").

3. Procedural Background

3.1      The Complaint was received in full (including annexes) by Nominet on 24 October 2005. Nominet validated the Complaint and sent a copy to the Respondent the same day, informing the Respondent that it had until 15 November 2005 to lodge a Response.

3.2      Since no Response was received by the deadline (or at all), the dispute did not proceed to Informal Mediation. On 23 November 2005 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service ("DRS") Policy ("the Policy").

3.3      Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert on 30 November 2005.

4. Outstanding Formal/Procedural Issues (if any)

4.1      Since the Respondent has not submitted a Response, I have checked the Complaint file to determine whether there are any exceptional circumstances which should lead to my taking any action other than proceeding to a decision, pursuant to paragraph 15(b) of the DRS Procedure ("the Procedure"). In particular, I have looked at the methods used to notify the Respondent of the Complaint.

4.2      The details in Nominet's database entry for the Registrant and Administrative Contact for the Domain Name are inter alia as follows:

Registrant: Morgan Stanley Latin America, LL C

Contact: James Irving

Address: 1 Park Lane

Morgan Stanley House

London, W1A 2HJ

Country: GB

Email: [email protected]

The same details are found in the WHOIS search result for the Domain Name, though no individual contact name is given.

4.3      From the Complaint file, it appears that Nominet attempted to notify the Respondent of the Complaint by the following means:

i. by e-mail to [email protected] (the e-mail address in Nominet's database entry for the Domain Name) and to [email protected] (in accordance with paragraph 2(a)(ii) of the Procedure); and

ii. by post to the postal address given for the Respondent in Nominet's database entry.

4.4      These are almost all of the various appropriate means of communicating the Complaint to the Respondent which are provided for in paragraph 2(a) of the DRS Procedure, and any one of them should have been sufficient.

4.5      The file reveals that the letter which was sent to the Respondent was returned by Royal Mail on 19 November 2005 citing "addressee unknown". In addition to this' the e-mail sent to [email protected] was returned, stating: "Unknown address error…Mailbox disabled for this recipient". However, no such failure notice was received in relation to the other e-mail address that was used.

4.6      Investigations by the Complainant have shown that the postal address given by the Respondent does not exist: there is no number 1 Park Lane in London. (The lowest number is no. 22.)

4.7      Nominet quite correctly used the details that had been notified to it by the Respondent upon registration of the Domain Name. Pursuant to Nominet's standard form registration contract, the Respondent will have agreed to keep Nominet informed of its correct contact details. In these circumstances, it is appropriate that Nominet should take the contact details at face value. I therefore proceed to decide this case on the basis that, if the Respondent has not had notice of this Complaint, it has nobody but itself to blame.

5. The Facts

5.1      The Complainant is a well-known and long-established United States corporation engaged in the business of providing financial services to individual, institutional and investment banking clients on a global basis.

5.2      The Complainant operates its business under the trading name "Morgan Stanley" and variants thereof, inter alia through websites found at www.morganstanley.com and www.morganstanley.co.uk. "Morgan Stanley" has been registered as a trade mark by the Complainant in particular in the US and the European Community, including the UK.

5.3      The Respondent calls itself Morgan Stanley Latin America, LL C. The Complainant raises a question as to whether such a named company really exists, or whether this is just a name used by individuals who lie behind the Respondent, but the question is not definitively answered. However, what is clear is that the contact address in central London, England, that is used by the Respondent is a false address.

5.4      The Respondent registered the Domain Name on 14 April 2005. The Domain Name resolves to a website at www.morganstanley-la.co.uk, which contains a frame that displays content from the website of the Complainant's UK subsidiary, at www.morganstanley.co.uk.

6. The Parties' Contentions

Complainant

6.1      The Complainant states that the Domain Name is identical or similar to a name or mark in which it has Rights and that, in the hands of the Respondent, it is an Abusive Registration. The basis for this claim is set out below.

6.2      The Complainant's business involves the provision of financial services to individual, institutional and investment banking clients on a global basis. 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 Complainant has provided evidence in support by way of copies of pages from the Complainant's websites at www.morganstanley.com and www.morganstanley.co.uk (and from associated linked websites), and from other independent third party websites.

6.3      The Complainant states that it owns numerous trade mark registrations which consist of, or contain, the words "Morgan Stanley". These include US Trade Mark Registration No. 1,707,196 for the word mark "Morgan Stanley" in class 36, 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. Relevant Registry database details have been provided.

6.4      The Complainant also states that it 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 UK subsidiary company, Morgan Stanley International Ltd, is the registrant for the morganstanley.co.uk domain name, although the www.morganstanley.co.uk website is operated by and/or on behalf of the Complainant.

6.5      The Respondent registered the Domain Name on 14 April 2005, by which time the Complainant already had its trade mark registrations and domain names incorporating the name "Morgan Stanley" and had built up common law rights in respect of the name.

6.6      The Complainant asserts that the Respondent has no connection with the Complainant and is not authorised to use the "Morgan Stanley" name. The Complainant has provided an extensive list of its subsidiaries and the Respondent's name does not appear on it.

6.7      The Complainant explains its own research and exhibits the report of an investigation carried out by a firm of corporate investigators, Carratu plc, which leads the Complainant to conclude that the Respondent's name and address are fictitious and that they are a front for one or more individuals who are using these details as part of a campaign which is intended to cause economic or other harm to the Complainant and its related companies and/or to bring financial or other benefit to the individuals concerned. Investigations show that the same individual(s) appear(s) to be behind another possibly fictitious name, Discover Financial Services LL C, being virtually identical to the name of a genuine subsidiary of the Complainant, and to have registered other domain names including morganstanley-chile.com, morganstanleycorp.com, morganstanley.law.pro and discoverfinancial.co.uk. (The Complainant has already filed UDRP complaints in relation to some of these other domain names.)

6.8      The Complainant asserts that the Respondent registered and uses the Domain Name in a manner that takes unfair advantage of and is unfairly detrimental to the Complainant's rights in its famous "Morgan Stanley" mark, and in particular because:

i. the Respondent's registration and use of the Domain Name are likely to cause confusion and to deceive consumers into mistakenly believing that the Respondent's Domain Name with its "-la" suffix, indicates that the address is one of the Complainant's family of domain names, perhaps used in relation to Latin America;

ii. such a false representation of the connection between the Respondent and the Complainant is likely to be damaging to the Complainant in the future if the Respondent were to use the Domain Name to point to another website not belonging to the Complainant, because people would suppose that such other website did in fact belong to, or was associated with, the Complainant;

iii. the evidence strongly suggests that the Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

6.9      Overall, the Complainant claims that the Domain Name is an Abusive Registration whose original registration and subsequent use took/takes unfair advantage of and was/is unfairly detrimental to the Complainant's Rights. It also points out that it is difficult to imagine any other explanation or legitimate reason as to the Respondent's choice of Domain Name.

Respondent

The Respondent has not filed a response.

7. Discussion and Findings:

General

7.1      Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:

i. it 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 (as defined in paragraph 1 of the Policy).

7.2      This is a straightforward case in which I have concluded that the Complainant succeeds. The summary of the Complaint above sets out the facts and matters on which I have relied in order to reach my decision, and I shall therefore try to avoid too much repetition in this section.

Complainant's Rights

7.3      Under paragraph 1 of the Policy, "Rights includes, but is not limited to, rights enforceable under English law". Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the United Kingdom and similar rights in jurisdictions elsewhere.

7.4      The Complainant clearly has registered trade mark rights in respect of the name "Morgan Stanley", which directly cover inter alia investment banking and other financial services. Further, it is clear that the Complainant has passing off rights in the United Kingdom on which it could rely to prevent the unauthorised use of the "Morgan Stanley" name in relation to financial services, and I am in no doubt that it has similar common law or unregistered trade mark and/or unfair competition rights in other jurisdictions.

7.5      The evidence that has been presented by the Complainant establishes that its "Morgan Stanley" trade mark has become very well-known on an international basis, having been used extensively and continuously since 1935.

7.6      Ignoring the suffix .co.uk, the "Morgan Stanley" trade mark is very similar to the Domain Name. The first limb of the test is therefore satisfied.

Abusive Registration

7.7      Paragraph 1 of the Policy defines an "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."

7.8      I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.

7.9      Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:

"3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

(A) …(B)…; 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; ..."

7.10      As to paragraph 3(a)(i)(C), it is clear from the face of the webpage taken from the Respondent's website, which is exhibited to the Complaint, that the Respondent is using the Domain Name to point to a website which frames the Complainant's website. Despite the purpose of the Respondent not being clear in this respect, I agree with the contention of the Complainant that it is hard to think of an innocent explanation for this, and that its purpose is to unfairly disrupt the Complainant's business.

7.11      The close similarity of the Domain Name to the "Morgan Stanley" trade mark, combined with the framing of the Complainant's website, is likely to cause people who visit the website to which the Domain Name points to believe that it is that of the Complainant or a subsidiary. Therefore, I find that paragraph 3(a)(ii) is satisfied.

7.12      As to 3(a)(iii), I decline to make a specific finding: although it does appear that the Respondent, or the individual(s) behind it have registered other domain names that are similar to the Complainant's "Morgan Stanley" trade mark, and also to another name under which the Complainant trades ("Discover Financial"), my understanding is that paragraph 3(a)(iii) is aimed at people who are engaged in a pattern of registering domain names that correspond to well known names of more than one rights owner, as opposed to multiple names of a single rights owner. However, the fact of registering more than one domain name that is similar to the Complainant's marks is certainly not helpful to the Respondent's case.

7.13      In relation to paragraph 3(a)(iv), the report by Carratu plc amounts to independent verification of the fact that the Respondent has given false contact details to Nominet. The address supplied simply does not exist.

7.14      I have considered whether there are any factors in the Respondent's favour which demonstrate that the Domain Name is not an Abusive Registration, some examples of which are given in paragraph 4 of the Policy. The Respondent has not submitted a Response, and therefore I have no explanation from its side as to any justification for adopting the Domain Name. However, there is nothing in the circumstances of which I am aware which assists the Respondent under paragraph 4 or otherwise.

7.15      Given the strong reputation of the "Morgan Stanley" name and business, and based on the facts and circumstances set out in the Complaint, I cannot think of any justification for the Respondent's registration or use of the Domain Name. I conclude that both limbs of the definition of "Abusive Registration" are satisfied in this case.

8. Decision

I find that the Complainant has Rights in respect of names which are similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name morganstanley-la.co.uk should be transferred to the Complainant.

Anna Carboni

13 December 2005