Morgan Stanley v. Meow
Claim Number: FA0604000671304
PARTIES
Complainant is Morgan Stanley (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Meow (“Respondent”), Baroness Penelope Cat of Nash DCB, Ashbed Barn, Boraston Track, Tenbury Wells, Worcestershire WR15 8LQ, GB.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mymorganstanleyplatinum.com>,
registered with Tucows Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 3, 2006; the National Arbitration Forum received a hard
copy of the Complaint on April 5, 2006.
On April 4, 2006, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <mymorganstanleyplatinum.com>
domain name is registered with Tucows Inc. and that the Respondent is the
current registrant of the name. Tucows
Inc. has verified that Respondent is bound by the Tucows Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On April 13, 2006, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 3, 2006
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@mymorganstanleyplatinum.com by e-mail.
A Response was received on May 4, 2006 and determined to be deficient
because it was received after the deadline for Response.
On May 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that it is an international leader in investment
banking and financial services, founded in 1935. It is the owner of the MORGAN STANLEY family of marks, some of
which are among the most famous marks in the financial world. Complainant owns registered marks in many
countries in the world. It offers
credit cards under the name “Platinum.”
According to Complainant, the disputed domain name is confusingly
similar to its MORGAN STANLEY mark.
Further, it alleges that Respondent has no rights or legitimate interest
in the disputed domain name. The
disputed domain name is used by one Mr. Woods to teach a class to demonstrate
how companies (such a Complainant) do not register obvious domain names.
According to Complainant, the WHOIS information for the disputed domain
name is fictitious and/or false.
B. Respondent
Respondent alleges that it is a cat (sic: the domestic
pet). According to Respondent,
it allows Mr. Woods (a human) to use the domain name registration in providing
a service. Complainant incorrectly states that Mr. Woods teaches a class, as
the Complainant is well aware Mr. Woods is a business consultant, the audience
for his seminars are senior management of small and medium sized business, not
a class.
According to
Respondent, Mr. Woods was certainly not angry about a Complaint being filed but
very surprised that Complainant had used the name but had still failed to
register it. These two items are mutually exclusive; one cannot use the domain
name and not use the domain name at the same time. It adds: “I do not in my
private or my business life do anything in bad faith. I consider the statement an insult and a deformation of my
character.”
Respondent
cites Morgan Stanley v. Michael
Woods, FA 604103 (Nat. Arb.
Forum Jan. 16, 2005), in which
the panel held that Complainant had failed to prove that the respondent acted
in bad faith.
According to
Respondent, the registration information is not false; there are an immense
number of Domain Names registered by non human beings. Mr. Woods is not trying
to conceal himself as if he were he wouldn’t be acting as my representative in
this matter. Having the domain name registered by me allows Mr. Woods to
introduce some humor into his presentations.
The address is not incorrect as Ashbed Barn is a barn conversion close
to Ashbed Cottage.
FINDINGS
Complainant owns numerous registered
trademarks containing the name MORGAN STANLEY.
The disputed domain name is being used for
seminars regarding failure by large companies to register obvious domain names.
Complainant’s mark is very well-known.
Respondent is not a common cat, that is not a
Felix domesticus.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Before discussing the substantive issues, the Panel must rule on a
procedural issue, because the Response was submitted one day late. The Panel elects to admit the late
Response. See Bd. of Governors of the Univ. of Alberta v.
Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a
response which was one day late, and received before a panelist was appointed
and any consideration made).
The disputed domain name is obviously
confusingly similar to Complainant’s well-known MORGAN STANLEY mark pursuant to
Policy ¶ 4(a)(i).
The disputed domain name is being used to
teach seminars regarding failure by well-known companies to register obvious
domain names. This use cannot be
considered legitimate, because there is no reason actually to register such
domain names in order to discuss such failures to register. It would suffice to find examples of
unregistered obvious domain names and to present them to the participants. Thus, the Panel holds that Respondent is not
using the disputed domain name in connection with a bona fide offering
of goods or services in the sense of Policy ¶ 4(b)(i).
Respondent does not give any other
justification for its use of the disputed domain name.
The Panel finds that the Respondent does not
have rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).
Respondent maintains that it is a cat, that
is, a well-known carnivorous
quadruped which has long been domesticated. However, it is equally well-known that the common cat, whose
scientific name is Felis domesticus, cannot speak or read or write. Thus, a common cat could not have submitted
the Response (or even have registered the disputed domain name). Therefore, either Respondent is a different
species of cat, such as the one that stars in the motion picture “Cat From Outer Space,” or Respondent’s
assertion regarding its being a cat is incorrect.
If Respondent is in fact a cat from outer
space, then it should have so indicated in its reply, in order to avoid
unnecessary perplexity by the Panel.
Further, it should have explained why a cat from outer space would allow
Mr. Woods to use the disputed domain name.
In the absence of such an explanation, the Panel must conclude that, if
Respondent is a cat from outer space, then it may have something to hide, and
this is indicative of bad faith behavior.
On the other hand, if Respondent’s assertion
regarding its being a cat is incorrect, then Respondent has undoubtedly attempted
to mislead this Panel and has provided incorrect WHOIS information. Such behavior is indicative of bad
faith. See Video Direct Distribs. Inc. v. Video Direct,
Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent
acted in bad faith by providing incorrect information to the registrar
regarding the owner of the registered name); see also Quixtar Invs., Inc. v. Smithberger,
D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration
information constitutes bad faith).
Respondent cites Morgan Stanley v. Michael Woods, FA 604103 (Nat. Arb. Forum Jan. 16, 2005), in which the
Panel found that Complainant had failed to prove bad faith registration and
use. But that case must be
distinguished from the present case, because in that case the Respondent was
Mr. Woods, and not a cat or someone who has misled the Panel by pretending to
be a cat.
The Panel finds that Respondent’s assertions
that it is a cat provide sufficient evidence to conclude that the Respondent
registered and is using the disputed domain name in bad faith. And this despite the fact that the Panel,
unlike Queen Victoria, is amused.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mymorganstanleyplatinum.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 22, 2006
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