Morgan Stanley Reclaims MOORGANSTANLEY.COM from Typosquatter

In the case of Morgan Stanley v. Terence tsang, FA 896636 (Nat. Arb. Forum March 9, 2007), Morgan Stanley was able to reclaim the domain name moorganstanley.com from a typosquatter. Complainant, Morgan Stanley, has been an international leader in investment banking and an innovator in financial services and products since its founding in 1935. With over 600 offices in twenty-eight countries, Complainant is able to offer global access to financial markets. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) and other international trademark authorities for the MORGAN STANLEY mark (i.e., Reg. No. 1,707,196 issued August 11, 1992) in connection with a variety of financial services. Respondent registered the moorganstanley.com domain name on November 28, 2006. Respondent was using the disputed domain name to redirect Internet users to a website that provided links to Complainant’s competitors.

The Panel first held that Respondent’s moorganstanley.com domain name was confusingly similar to Complainant’s MORGAN STANLEY mark because Respondent’s domain name incorporated Complainant’s entire mark, added the letter “o,” and added the generic top-level domain “.com.” The Panel found that such minor alterations to Complainant’s registered mark did not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).

On the question of whether Respondent had any rights or legitimate interests in the domain name, the Panel noted that the Respondent was using the domain name to redirect Internet users to Respondent’s website that featured links to financial services that compete with Complainant’s services. Respondent’s use of a domain name that was confusingly similar to Complainant’s MORGAN STANLEY mark to redirect Internet users interested in Complainant’s financial services to a website that offers similar financial services in competition with Complainant’s business was deemed not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).

The Panel further noted that the WHOIS database listed the Registrant of the disputed domain name as “Terence tsang,” and Complainant asserted that Respondent was not publicly known as MOORGAN STANLEY. Furthermore, Respondent had offered no evidence and there was no evidence in the record suggesting that Respondent was commonly known by the moorganstanley.com domain name. Thus, Respondent had not established rights or legitimate interests in the moorganstanley.com domain name pursuant to Policy ¶ 4(c)(ii).

Turning to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel found that Respondent was using the moorganstanley.com domain name to redirect Internet users to a website featuring links to financial services that competed with Complainant. Respondent’s use of the disputed domain name containing Complainant’s entire mark suggested to the Panel that Respondent registered the disputed domain name intending to disrupt Complainant’s business. The Panel therefore found that this was evidence of bad faith registration and use under Policy ¶ 4(b)(iii).

Additionally, Respondent was using the morganstanley.com domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent was using Complainant’s MORGAN STANLEY mark to attract Internet users to a website that featured links to financial services that competed with Complainant’s services. Respondent was presumably using the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source of the website.

Finally, the Panel noted that Respondent’s registered domain name moorganstanley.com contained Complainant’s entire mark and added an additional “o.” The Panel held that website users might mistakenly type the letter “o” twice instead of once when typing Complainant’s web address into their browser. The Panel assumed therefore that this was a scrupulous attempt by Respondent to capitalize on a common typographical error, thus constituting typosquatting, which was a further indication of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Having established all three elements required under the ICANN policy, the Panel ordered that the moorganstanley.com domain name be TRANSFERRED from Respondent to Complainant.