Blackstone TM L.L.C. v. Anna Boldoreva / Phisical Face
Claim Number: FA2004001891874
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Anna Boldoreva / Phisical Face (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myblackstones.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 the Forum electronically on April 13, 2020; the Forum received payment on April 13, 2020.
On April 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myblackstones.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2020 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@myblackstones.com. Also on April 15, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Blackstone, LLC, is a world-renowned financial services company with hundreds of billions of dollars’ worth of assets under management. Complainant’s asset management business has offices worldwide and provides various financial advisory services, credit services, and other significant investment and management services.
Complainant has rights in the BLACKSTONE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <myblackstones.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s BLACKSTONE mark, simply adding the letter “s,” the generic word “my,” and the ‘.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <myblackstones.com> domain name. Respondent is not licensed or authorized to use Complainant’s BLACKSTONE mark and is not known by the at-issue domain name. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to address Respondent’s own website so that it may mislead consumers into thinking they are dealing with Complainant in furtherance of fraudulently extracting their personal and financial information.
Respondent registered and uses the <myblackstones.com> domain name in bad faith. Respondent uses the domain name to impersonate Complainant in order to acquire personal, business, and/or financial information from consumers. Respondent also disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Additionally, Respondent engages in a pattern of bad faith registration. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the BLACKSTONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in BLACKSTONE.
Respondent is not affiliated with Complainant and is not authorized to use the BLACKSTONE mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in BLACKSTONE.
Respondent registered and uses the at-issue domain name to impersonate Complainant in order to fraudulently acquire personal, business, and/or financial information from consumers.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its BLACKSTONE trademark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Further, Respondent’s <myblackstones.com> domain name incorporates Complainant’s BLACKSTONE trademark prefixed with the generic term “my” and suffixed with the letter “s,” all followed by the generic top-level domain name “.com.” Importantly, the differences between Complainant’s trademark and Respondent’s domain name do not distinguish the at-issue domain name from Complainant’s trademark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <myblackstones.com> domain name is confusingly similar to Complainant’s BLACKSTONE trademark. See BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar”); see also, PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the 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 <myblackstones.com>.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Anna Boldoreva/Phisical Face” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <myblackstones.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <myblackstones.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the <myblackstones.com>domain name to mislead consumers and direct them to a website that such wayward visitors may believe is affiliated with Complainant, when it is not. Respondent’s bogus website presents visitors with material lifted from Complainant’s official website and contains links to the official website. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO , FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent’s <myblackstones.com> domain name was registered and used in bad faith. As discussed below, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant shows that Respondent has been subject to other UDRP proceedings involving Complainant including three complaints that are still pending against Respondent and one where the panel found averse to Respondent. See for example, Blackstone TM L.L.C. v. Anna Boldoreva / Phisical Face, FA 1888646 (Forum April 13, 2020). . Each such complaint has an underlying operative fact pattern that is similar to that found in the instant case. Respondent’s prior adverse UDRP decision and the associated prior filings by Complainant against Respondent indicate Respondent’s pattern of bad faith per Policy ¶ 4(b)(ii). Respondent’s prior cybersquatting suggests Respondent’s bad faith registration and use of the <myblackstones.com> domain name.
As mentioned above regarding rights and legitimate interest, Respondent’s confusingly similar domain is used to address a website displaying material from Complainant’s official website. Respondent thereby attempts to pass itself off as Complainant in furtherance of a phishing scheme that will ultimately benefit Respondent financially. The scheme involves presenting <myblackstones.com> website visitors with an investor portal. Thereby, Respondent solicits personal and account information from site visitors who believe they are dealing with Complainant, when they are not. Respondent’s use of the confusingly similar domain name to create the false impression of affiliation with Complainant is disruptive to Complainant’s business and shows Respondent’s bad faith registration and use of the <myblackstones.com>domain name per Policy ¶¶ 4(b)(iii) and (iv). See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Google Inc. v. Domain Admin / Whoisf Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <myblackstones.com> knowing that Complainant had trademark rights in the BLACKSTONE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark as well as from Respondent’s use of its <myblackstones.com> domain name to pass itself off as Complainant as discussed above. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <myblackstones.com> domain name in bad faith 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myblackstones.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 7, 2020
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