Blackstone TM L.L.C. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2110001970015
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstoneicapitalnetwork.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2021; the Forum received payment on October 21, 2021.
On October 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <blackstoneicapitalnetwork.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 October 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2021 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@blackstoneicapitalnetwork.com. Also on October 25, 2021, 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.
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, Blackstone TM LLC, is a financial services company. Complainant has rights in the BLACKSTONE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,986,927, registered July 16, 1996). Respondent’s <blackstoneicapitalnetwork.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark since it incorporates the mark, merely adding the generic terms “iCapital” and “network,” as well as the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <blackstoneicapitalnetwork.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s BLACKSTONE mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts commercial hyperlinks and offers the domain name for sale.
Respondent registered and uses the <blackstoneicapitalnetwork.com> domain name in bad faith. Respondent offers the disputed domain name for sale. Respondent also has displayed a pattern of bad faith. Further, Respondent attracts users for commercial gain by displaying related third-party hyperlinks. Additionally, Respondent had actual knowledge of Complainant’s rights in the BLACKSTONE mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <blackstoneicapitalnetwork.com> domain name.
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”).
Complainant asserts rights in the BLACKSTONE mark based upon registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark per 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)). Complainant provides evidence of its USPTO registrations (e.g., Reg. No. 1,986,927, registered July 16, 1996). The Panel finds that Complainant has rights in the BLACKSTONE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <blackstoneicapitalnetwork.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark since it incorporates the mark, merely adding the generic terms “iCapital” and “network,” as well as the “.com” gTLD. Addition of a generic or descriptive term and a gTLD is insufficient to overcome confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have rights or legitimate interests in the <blackstoneicapitalnetwork.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s BLACKSTONE mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “Carolina Rodrigues/Fundacion Comercio Electronico” and Complainant contends that it did not authorize Respondent’s use of the BLACKSTONE mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent fails to use the <blackstoneicapitalnetwork.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent hosts commercial hyperlinks and offers the domain name for sale. Use of a disputed domain name to host commercial hyperlinks is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third-party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Similarly, listing a disputed domain name for sale is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots of the parked links webpage at the disputed domain as well as a listing of the disputed domain name for sale. The Panel finds that Respondent’s use does not amount to a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <blackstoneicapitalnetwork.com> domain name in bad faith since Respondent offers the disputed domain name for sale. A general offer to sell a disputed domain name may support a finding of bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides a screenshot of a domain name auction site where the disputed domain name is offered for sale for a minimum offer of $899 USD. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also claims that Respondent has displayed a pattern of bad faith. Under Policy ¶ 4(b)(ii), a pattern of bad faith may be shown by previous UDRP decisions in which domain names were transferred from a respondent. See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). Complainant claims that Respondent is a serial cybersquatter, alleging a search of the Forum database reveals that Respondent has been found to violate the UDRP in at least 160 cases. This is evidence of find bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant argues that Respondent attracts users for commercial gain by displaying related third-party hyperlinks at the <blackstoneicapitalnetwork.com> domain. Use of a confusingly similar domain name to display related or competing third-party commercial hyperlinks may be evidence of bad faith disruption of business per Policy ¶ 4(b)(iii) and/or bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)(iv)”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Complainant provides screenshots of the webpage resolving at the disputed domain, which displays links to businesses that offers services related to or competing with Complainant’s services. This is evidence that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BLACKSTONE mark when it registered the <blackstoneicapitalnetwork.com> domain name. Actual knowledge of a complainant’s rights in a mark supports a finding of bad faith under Policy ¶ 4(a)(iii) and may be shown by the totality of circumstances surrounding registration and use of the disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). Complainant argues that Respondent’s knowledge of the BLACKSTONE mark is clear from the reputation of the mark as well as Respondent’s use of the disputed domain to redirect users to similar services. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <blackstoneicapitalnetwork.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
November 30, 2021
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