Morgan Stanley v. stephen platter
Claim Number: FA2303002035922
Complainant is Morgan Stanley (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondent is stephen platter (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com>, registered with Godaddy.Com, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 15, 2023; Forum received payment on March 15, 2023.
On March 16, 2023; March 21, 2023, Godaddy.Com, Llc confirmed by e-mail to Forum that the <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chatgptmorganstanley.com, postmaster@chatgptmorganstanleypwm.com. Also on March 22, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Morgan Stanley, offers financial, investment, and wealth management services.
Complainant has rights in the MORGAN STANLEY mark through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names are identical or confusingly similar to Complainant’s MORGAN STANLEY mark as they both incorporate Complainant’s mark while adding the generic or descriptive term “chatgpt” and the <chatgptmorganstanleypwm.com> domain name adds the term “pwm” while both domain names add the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names. Respondent is not commonly known by either at-issue domain name, nor has Complainant authorized or licensed Respondent to use its MORGAN STANLEY mark in the at-issue domain names. Respondent does not use the at-issue domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts a parked page displaying links to services competing with Complainant’s product offering.
Respondent registered and uses the <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names in bad faith. Respondent offers competing services in disruption of Complainant’s business. Additionally, Respondent registered the at-issue domain names with constructive and/or actual knowledge of Complainant’s rights in the MORGAN STANLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MORGAN STANLEY trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MORGAN STANLEY trademark.
Respondent uses the at-issue domain names to address a parking page with links to Complainant’s competitors.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO trademark registration for its MORGAN STANLEY trademark. Respondent’s national trademark registration, as well as any of its national registrations worldwide, is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also, Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names each contain Complainant’s MORGAN STANLEY trademark less its domain name impermissible space; both domain names are prefixed by a term, “chatgpt” while one suffixes Complainant’s mark with the letters “pwm.” Both domain names conclude with the “.com” top-level domain name. The differences between either of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either at-issue domain name from Complainant’s MORGAN STANLEY mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names are each confusingly similar to Complainant’s MORGAN STANLEY mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at‑issue domain names. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Stephen Platter” and the record before the Panel contains no evidence that tends to prove that their registrant is commonly known by one (or both) of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either <chatgptmorganstanley.com> or <chatgptmorganstanleypwm.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names are each used to address a parked webpage offering links to Complainant’s competition. Respondent’s use of the at-issue domain names in this manner shows that neither domain name supports a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names to host competitive hyperlinks. Respondent’s use of the confusingly similar at-issue domain names in this manner disrupts Complainant’s business and indicates Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶ 4(b)(iii). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the MORGAN STANLEY mark when it registered <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> as domain names. Respondent’s actual knowledge is evident given the worldwide notoriety of Complainant and its trademark as well as from Respondent’s registration of multiple domain names incorporating Complainant’s trademark. Respondent’s registration of two confusingly similar domain names with knowledge of Complainant’s trademark rights in MORGAN STANLEY further shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chatgptmorganstanley.com> and <chatgptmorganstanleypwm.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 14, 2023
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