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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Morgan Stanley v Chao Investments Ltd [2007] DRS 4323 (12 February 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4323.html Cite as: [2007] DRS 4323 |
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Nominet UK Dispute Resolution Service
DRS 4323
Morgan Stanley v. Chao Investments Limited
Decision of Independent Expert
Complainant: Morgan Stanley
Country: US
Respondent: Chao Investments Limited
Country: NZ
morganandstanley.co.uk ("the Domain Name")
The Complaint was submitted to Nominet on 19 December 2006. Hardcopies were received in full on 20 December 2006 and the Complaint was validated by Nominet and sent to the registrant contact for the Respondent by post and fax, and by email both to [email protected] and to the email address which Nominet held for the registrant contact for the Respondent on the register database. The Respondent was informed in this correspondence that it had 15 working days, that is, until 16 January 2007 to file a response to the Complaint.
The Respondent did not file a response and the case did not proceed to the mediation stage. On 24 January 2007 the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy"). On 29 January 2007, Andrew Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and 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. Nominet duly appointed the Expert with effect from 31 January 2007.
No response
The Respondent has failed to submit a response to Nominet in time in accordance 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 laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."
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 or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.
The Complainant is a well known financial institution incorporated in the State of Delaware, USA. It was formed in 1997 following a merger between two long-established financial institutions and changed its name to Morgan Stanley in 2002. It has over 600 offices and over 53,000 employees in 30 countries worldwide, including the UK. It offers a range of consumer finance products and other services in the UK including credit card services, in respect of which there were 1.5 million credit card accounts in the UK at the end of 2005.
The Complainant is the proprietor of Community Trade Mark number 175950 for the word mark MORGAN STANLEY in classes 9, 16 and 36, registered on 30 November 1998, and UK Trade Mark Number 1465887 for the word mark MORGAN STANLEY in class 36, registered on 5 August 1994.
The Respondent registered the Domain Name on 11 September 2004.
As at the date of this decision, the web page associated with the Domain Name displayed a series of hyperlinks, the majority of which were devoted to various providers of credit card services other than the Complainant.
Complainant
The Domain Name was registered long after the Complainant established its Rights in the Morgan Stanley name. Disregarding the generic .co.uk suffix, the Domain Name is virtually identical, or very confusingly similar, to the Complainant's Morgan Stanley name and mark, as it simply inserts the word "and" into the mark. The Domain Name is similarly virtually identical, or very confusingly similar, to the Complainant's subsidiary company's domain name morganstanley.co.uk, which the Complainant uses for its web site aimed specifically at customers and potential customers in the UK.
The primary purpose in registering the Domain Name, and the subsequent use which the Respondent has made of the Domain Name, fall within paragraphs 3(a)(i)(C), 3(a)(ii) and 3(a)(iii) of the Policy.
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. It is difficult to imagine any reason for the choice of Domain Name other than an intention to take unfair advantage of, and/or to use the Domain Name to the detriment of, the Complainant's Rights.
The Respondent is using the Domain Name as the address for an Internet webpage headed morganandstanley.co.uk. The page contains links, selected either by the Respondent or with its knowledge and consent, to the web sites of a number of financial service providers other than the Complainant, including Halifax plc and Capital One. The webpage appears to be provided by a domain parking service, although it is not clear which of these services the Respondent is using. Generally, the owners of domain names parked with such sites receive payments from them based upon the number of visitors to the webpage who click on the advertisers' links listed there. The natural conclusion is that the more people who visit the Respondent's webpage, the more income the Respondent receives.
Internet users who mistakenly believe that "Morgan and Stanley" is the correct name of the Complainant, are likely to be directed to the Respondent's webpage at www.morganandstanley.co.uk. It is not certain that visitors to the Respondent's webpage will immediately realise that they have not reached the Complainant's website. There is no obvious indication that the website is not connected to Morgan Stanley.
On 15 August 2006, the registrant was named as Robert Morrison trading as DHG with a PO Box address in Victoria, Australia. On 29 August 2006 the registrant was listed as the Respondent, still trading as DHG but with a different PO Box address in Auckland, New Zealand. Nominet advised that the Domain Name had been transferred to the Respondent on 15 August 2006. Since both the Respondent and Mr Morrison are listed as trading as DHG, the Complainant submits that the Respondent, Chao Investments Limited, is an alternative name for and/or is run by Mr Morrison and that he still controls the Domain Name. Robert Morrison has engaged in a pattern of making Abusive Registrations of domain names which correspond to well known names or trade marks in which he has no apparent rights. Mr Morrison has altered his address information in the past and it is submitted that Mr Morrison has now also altered the name under which he is operating.
Visitors to the Respondent's webpage may react in a number of ways. 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 (and the Respondent) and financial or other detriment to the Complainant. This strongly suggests that the Respondent acquired the Domain Name 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.
It also shows that the Respondent is using the Domain Name 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 Name is registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 3(a)(ii) of the Policy).
The Complainant does not have evidence of any particular instances of confusion. However, it is unlikely in the majority of cases that the Complainant would be aware of confusion which occurs. Experts have been able to conclude 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. In this case, it seems natural to conclude that the Registrant intended there to be confusion, because there is no other reason for the webpage to exist and for people to visit it, and that confusion is bound to have arisen.
This case falls clearly within paragraphs 3(a)(i)(C), 3(a)(ii) and 3(a)(iii) of the Policy. However, these are non-exhaustive factors which may be evidence of an Abusive Registration. Both the registration of the Domain Name and the subsequent use made of it took/take unfair advantage of and were/are unfairly detrimental to the Complainant's Rights. It is difficult to imagine any innocent explanation or legitimate reason as to the Respondent's choice of Domain Name other than to take unfair advantage of, and/or to use it to the detriment of, the Complainant's Rights
Respondent
The Respondent has not filed a response.
General
In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, 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
Paragraph 1 of the Policy provides that Rights "includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business". Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or term is identical or similar to the Domain Name.
Complainant's Rights in the mark MORGAN STANLEY
The requirement to demonstrate Rights under the Policy is not a particularly high threshold test. Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.
The Complainant has cited two registered trade marks for the word mark MORGAN STANLEY that have effect in the UK as noted in section 5 above, of which it is the registered proprietor. It is clear to the Expert that the Complainant has Rights in each of the above marks. It is worth noting that the Complainant also provided evidence of very extensive common law use of the name MORGAN STANLEY but given the existence of the registered trade marks it is not necessary for the Expert to consider common law use in detail.
The second question for the Expert is whether the name or term in which the Complainant claims Rights is wholly descriptive of the Complainant's business. The Complainant's business is financial services and the name or term relied upon by the Complainant is not descriptive of such a business in whole or part.
The final question regarding Rights is whether the name or mark is identical or similar to the Domain Name. The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic. This leaves a comparison between MORGAN STANLEY and the third level part of the Domain Name 'morganandstanley'. On this comparison there is considerable similarity between the mark and the Domain Name whether on an objective (three characters different) or subjective (general appearance of the domain) test. As the Complainant points out '[the Domain Name] simply inserts the word "and" into the Morgan Stanley mark'.
Accordingly, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.
Abusive Registration
Is the Domain Name, in the hands of the Respondent, an Abusive Registration? 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 constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy. The Complainant is not, however, obliged to frame its submissions in terms of any of the elements in paragraph 3.
In the present case, the Complainant focuses on paragraphs 3(a)(i)(C) - Domain Name registered primarily for the purpose of unfairly disrupting the business of the Complainant; 3(a)(ii) - Circumstances indicating that Respondent's use of Domain Name has confused people or businesses into believing it is registered to, authorised by or connected with the Complainant; and 3(a)(iii) - Respondent is engaged in a pattern of registrations corresponding to well known names or trade marks. The Complainant also adds that its specific submissions on the non-exhaustive factors should not restrict the scope of its primary and general submission that the Domain Name is an Abusive Registration.
With regard to paragraph 3(a)(i)(C), the Expert does not consider that the Domain Name was registered primarily for the purpose of unfairly disrupting the business of the Complainant [Expert's emphasis]. Given that the website associated with the Domain Name consists of so-called 'sponsored listings', being hyperlinks to the web sites of a number of financial service providers other than the Complainant, it is reasonable to infer that the Respondent registered the Domain Name in order to receive payments based upon the number of visitors to the webpage who click on the links. The Expert believes that in such a case the primary purpose of the Respondent was to generate advertising revenue, not to cause unfair disruption to the Complainant's business. Such disruption, however inevitable, is a by-product or end result of the Respondent's intent; it is not the primary purpose itself.
With regard to paragraph 3(a)(ii), the Complainant candidly accepts that it does not have evidence of actual confusion. As such, the Complainant's submission cannot be said to fall squarely within the terms of this non-exhaustive factor. However, the Complainant notes that its submissions on the non-exhaustive factors should not be treated as restricting the scope of the complaint within the broad definition of Abusive Registration. The Complainant further asserts that it is reasonable to infer that the Respondent intended there to be confusion and that, given the nature of the Domain Name and website, such confusion is bound to have arisen. The Expert agrees with this contention.
It is abundantly clear to the Expert from the nature of the Domain Name and the content of the website that the Respondent is seeking to profit from 'initial interest' confusion generated by the association of a variant of the Complainant's corporate name with the Respondent's website, coupled with any further confusion which may result from the presentation of hyperlinks pointing to a range of the Complainant's competitors. The Respondent has not sought to provide any explanation for its use of the Domain Name in this manner and this raises the inference that the Respondent has no reasonable or honest explanation to offer.
On the balance of probabilities, the Expert considers that the confusion which the Domain Name is very likely to generate, given that a substantial proportion of the visitors to the associated website will be expecting to find the Complainant, and the high possibility of subsequent diversion of those visitors to competitors of the Complainant by way of the hyperlinks together amount to a use of the Domain Name which is unfairly detrimental to the Complainant's Rights. As such, the Domain Name constitutes an Abusive Registration.
The Complainant's final submission relates to the apparent connection between the previous registrant of the Domain Name, Robert Morrison, and the current registrant (the Respondent). The Complainant asserts that Mr Morrison has engaged in a pattern of making abusive registrations and there is little doubt that this is the case given the volume of DRS decisions in which he was the Respondent and in which a finding of abusive registration was made. The Complainant submits that given the original registrant and the Respondent are both listed on the WHOIS as trading as 'DHG' they must be one and the same entity. The Expert does not consider that the Complainant's submission is particularly conclusive of a connection between the old and new registrants given that (1) the 'trading as' field is not altered upon a change of registrant name and requires positive action by the Nominet tag holder (or the new registrant using Nominet's Registrants Online service) before it is amended; and (2) in any event by the date of this decision the 'trading as' field had in fact been amended to remove 'DHG', possibly, but not definitely, as a consequence of the Complainant's submission.
Finally, the Expert notes that there are three prior decisions against the present Respondent in the last two years in which a finding of Abusive Registration has been made. Had the Complainant proved this in its submissions this would, in itself, have given rise to a rebuttable presumption of Abusive Registration in accordance with paragraph 3(c) of the Policy. However, the most recent DRS decision of the three was rendered on 25 January 2007, just over one month after the present complaint was filed. In these circumstances the Complainant could not possibly have known about this and/or offered to prove it but in the Expert's view the existence of these decisions lends further weight to the finding of Abusive Registration in this case.
The Expert finds, on balance of probabilities, that the Complainant has proved that it has Rights in a name or mark similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the Domain Name be transferred to the Complainant.
Andrew D S Lothian
12 February, 2007