ADR Center for .eu attached to the Arbitration Court attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic (Czech Arbitration Court)
Panel Decision
§ B12 of the .eu Dispute Resolution Rules (ADR Rules)
Case No.: 05486 Time of Filing: 2009-10-27 10:33:05 Administrative Contact: Josef Herian Complainant Name: Morgan Stanley Smith Barney Holdings (UK) Limited, Sarah Cole Complainant's Authorized Representative Name: Mills & Reeve LLP, Sarah Cole Respondent Name: morganstanley-smithbarneymorganstanley Respondent's Authorized Representative Name: Domain Name(s): MORGANSTANLEYSMITHBARNEY Other Legal Proceedings English summary of the decision: English summary of this Decision is hereby attached as Annex 1 Factual Background Parties’ Contentions
(a) The Complainant’s parent company owns registered and unregistered rights in the name “Smith Barney”, including a Community trademark, which have been licensed to the Complainant. Morgan Stanley owns registered and unregistered rights in the name “Morgan Stanley”, including a Community trademark, which have also been licensed to the Complainant and its parent company.
(b) The Respondent registered the disputed domain name without rights or legitimate interests in it and in bad faith and is using it in bad faith. He used a false name to register it and has no connection with the Complainant. The registration of the domain name three days after the announcement of the creation of the Complainant’s parent company as a joint venture of Morgan Stanley and Smith Barney cannot have been coincidence and must have been to take unfair advantage of and/or to use the domain name to the detriment of the Complainant’s rights.
(c) Internet users will assume that the disputed domain name is owned and/or controlled by the Complainant or an associated company. The registration and use of the domain name are intended to pass off.
(d) The Respondent used a false address to register the domain name and does not meet the general eligibility criteria.Discussion and Findings
2. A registration is speculative or abusive according to article 21 of the Regulation if
(a) the domain name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and/or Community law; and
(b) it has been registered by its holder without rights or legitimate interests, or it has been registered or is being used in bad faith.
3. In accordance with paragraph 10 of the ADR Rules, where a Respondent fails to submit a Response to the Complaint within the time specified in them, the Panel may consider this failure as grounds to accept the claims of the opposite party and shall draw such inferences from the Respondent’s default as it considers appropriate.
4. The Panel finds that the disputed domain name is confusingly similar to both “Smith Barney” and “Morgan Stanley”. Given the association of these names created by the formation of the joint venture, the combination of the two names in the disputed domain name does not avert confusion between the domain name and either of the individual names.
5. It is also clear that rights in both “Smith Barney” and “Morgan Stanley” are recognised by national and Community laws.
6. The Panel further finds that the disputed domain name was registered by the Respondent without any rights or legitimate interests. It is obvious that the name used by the Respondent in effecting the registration is not his real name. The Panel has no hesitation in accepting the claims of the Complainant in this regard in the absence of any Response under paragraph 10 of the ADR Rules.
7. It follows that the disputed domain name must be revoked or transferred to the Complainant.
8. Article 22(11) of the Regulation provides that where it is found that the registration is speculative or abusive, the domain name should be transferred to the Complainant if the latter so requests and meets the general eligibility criteria set out in article 4(2)(b) of Regulation 733/2002; and otherwise it should be revoked.
9. The general eligibility criteria set out in article 4(2)(b) of Regulation are: an undertaking having its registered office, central administration or principal place of business within the Community; or an organisation established within the Community; or a natural person resident in the Community.
10. The Complainant has requested transfer, but has provided minimal evidence that it satisfies the general eligibility criteria. Nevertheless, the Panel infers from the information provided that the Complainant is an undertaking having its registered office within the Community and/or an organisation established within the Community.
11. The disputed domain name should therefore be transferred to the Complainant.Decision
the domain name MORGANSTANLEYSMITHBARNEY be transferred to the ComplainantPanelists
- Jonathan Turner
Date: 2010-01-25 Annex 1
The Panel found that the disputed domain name was confusingly similar to both “Morgan Stanley” and “Smith Barney” and that rights in these names were recognised under national and Community laws. The Panel further found that the Respondent had registered the domain name without any rights or legitimate interests. Since the Complainant requested transfer and it could be inferred from the information provided that it satisfied the general eligibility criteria, the Panel concluded that the Domain Name should be transferred to it.