Moggie madness-cats cannot own domain names nor speak or read or write-
irrelevant whether cat is from outer space or not.
Domain name disputes can take unexpected twists as this recent national arbitration case demonstrates-Morgan Stanley v Meow.
Morgan Stanley sought successfully to contest the domain name mymorganstanleyplatinum.com that was registered with Tucows Inc in the name of Baroness Penelope Cat.
The case was decided under ICANN’s dispute resolution policy to which the Respondent was bound.
Morgan Stanley argued the domain name was confusingly similar to its trademarks or if not the WHOIS registration information was false/made in bad faith.
The Respondent argued that Felix domesticus-domestic cat-allowed a Mr Woods to use the domain name and that there was no similarity nor any bad faith involved.
The sole arbiter found that:
“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.”
Although the case was concerned with the domestic cat, the same principles would apply to all domestic pets so there is no loophole for readers’ dogs, budgerigars, hamsters etc
Comment
Mr Woods appeared to have so used the domain name as part of his business consultancy/training seminar programme as to how large companies did not register obvious domain names. It was intended to inject some humour into the presentations but in this case the joke was on him as it was Morgan Stanley that was left laughing last having successfully challenged the registration and so causing the domain name to be transferred to its ownership.
Mixing law and mirth and getting it wrong is no laughing matter as Mr Woods/Baroness Cat found to their cost though the arbiter did comment:
“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.”
The Respondent-Baroness Penelope-failed to fulfill the three key ownership criteria of Paragraph 4(a) of the Policy that required 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.
The disputed domain name was found to be:
(1) confusingly similar to the registered trade mark on its face and
(2) registered and used in bad faith since it was being used to teach seminars but such use could not be considered legitimate, because there was no reason actually to register such domain names in order to discuss such failures to register. It would have been sufficient to find examples of unregistered obvious domain names and to present them to the participants. Thus, the Panel held that Respondent was 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) and
(3) owned by the Respondent who did not give any other justification for its use of the disputed domain name. The Panel found that the Respondent did not have rights or legitimate interests in the disputed domain name pursuant to Policy.
