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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Morgan Stanley v. Meow

FA0604000671304 (Nat. Arb. Forum, May 22, 2006)

In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy, the Panel directed Michael Woods ("Woods"), who registered the domain, to transfer the domain to petitioner Morgan Stanley.  Woods had registered the domain name to demonstrate to attendees of his seminars that major companies do not register obvious domain names, and highlight the problems that can be caused thereby.  Mr. Woods was found to be acting in bad faith because he registered the domain in the name of his cat, MEOW, the named respondent in this proceeding. 

To prevail in a domain name dispute, a petitioner must establish:

(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 Panel held that the domain name at issue was confusingly similar to petitioner's famous Morgan Stanley mark. 

The Panel further held that Respondent had no legitimate interest in the domain, despite his protestations that such registration aided his education of senior management about the perils of failing to register obvious domains.  Such a result, held the Panel, could just as easily be achieved by pointing out domains such companies had failed to register, without actually registering them.

Finally, bad faith was established by Respondent's provision of false contact information to the domain registrar Tucows.  Obviously, the registrant was not a cat, notwithstanding Respondent's protestations to the contrary.  Respondent was accordingly directed to transfer the domain at issue to Morgan Stanley.

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