Blackstone TM L.L.C. v. Wangshi c/o Wang Shi
Claim Number: FA1005001327162
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Richard
S. Mandel, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blackstone-sh.com>, registered with XIN NET TECHNOLOGY CORPORATION.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2010. The Complaint was submitted in both Chinese and English.
On May 30, 2010, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <blackstone-sh.com> domain name is registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. XIN NET TECHNOLOGY CORPORATION has verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 1, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of June 21, 2010 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@blackstone-sh.com. Also on June 1, 2010, the Chinese Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 28,2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <blackstone-sh.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark.
2. Respondent does not have any rights or legitimate interests in the <blackstone-sh.com> domain name.
3. Respondent registered and used the <blackstone-sh.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blackstone TM
L.L.C., established its rights to the BLACKSTONE mark through its
registration of the trademark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,986,927 issued July 16, 1996) and with
Respondent, Wangshi c/o Wang Shi, registered the <blackstone-sh.com> domain name on October 14, 2009. The disputed domain name resolves to a website offering services in competition of the Complainant and displaying Complainant’s logo in relation to its mark.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts it has rights in the BLACKSTONE mark
through its trademark registration with the USPTO (Reg. No. 1,986,927 issued
July 16, 1996) and with
Complainant alleges that Respondent’s <blackstone-sh.com> domain name is
confusingly similar to its BLACKSTONE mark.
Complainant argues that Respondent’s disputed domain name merely adds a
hyphen, an abbreviation for a geographic term (“sh” for “
The Panel finds the elements of Policy ¶ 4(a)(i) have been satisfied.
Complainant alleges that Respondent has no rights and legitimate
interests in the <blackstone-sh.com>
domain name. Once Complainant has made a prima
facie case in support of this allegation, the burden to establish that
Respondent has rights or legitimate interests in the disputed domain name
shifts to Respondent, pursuant to Policy ¶ 4(a)(ii).
Based on the allegations made in the Complaint, the Panel finds Complainant has
established a prima facie case, thus
shifting the burden to Respondent. Since Respondent has not responded to the
Complaint, the Panel may presume that Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to
examine the record to determine whether Respondent has any rights or legitimate
interests pursuant to the factors outlined in Policy ¶ 4(c). See SEMCO Prods.,
LLC v. dmg world media (
Complainant contends that Respondent is not commonly known
by the disputed domain name. The WHOIS
information for the <blackstone-sh.com>
domain name lists “Wangshi c/o Wang Shi”
as the registrant, which indicates that Respondent is not commonly known by the
disputed domain name. Further,
Complainant asserts that no license or other authorization has been given to
Respondent to use the BLACKSTONE mark.
Therefore, the Panel finds that these facts, together with the absence
of information to the contrary, establish the conclusion that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Oakley,
Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that the value
in the Oakley name has been created by the commercial use and registrations of
the Complainant and it is also clear . . . that
Respondent is taking advantage of the value created by the Complainant.”); see also Foot Locker Retail, Inc. v.
Gibson, FA 139693 (Nat. Arb.
Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce
Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of
the disputed domain names prior to their registration, and concludes that
Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Complainant contends that Respondent’s disputed domain name resolves to a website purporting to offer investment products for sale, in competition with Complainant. Complainant argues that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Further, Complainant alleges that the website resolving from Respondent’s disputed domain name is offering the products fraudulently through the confusion of investors seeking Complainant. The Panel finds that fraudulently offering services similar to Complainant through a website resolving from Respondent’s confusingly similar domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Complainant alleges that Respondent’s use of the disputed domain name is an attempt to pass itself off as Complainant and, as such, is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant contends that the website resolving from Respondent’s <blackstone-sh.com> domain name displays Complainant’s logo related to its BLACKSTONE mark and purports to offer services similar to those offered by Complainant under its mark. The Panel finds that Respondent’s attempt to pass itself off as Complainant exhibits a lack of rights and legitimate interests in the <blackstone-sh.com> domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds the elements of Policy ¶ 4(a)(ii) have been satisfied.
Internet users, seeking Complainant’s business under its BLACKSTONE mark, may be diverted to the website resolving from Respondent’s disputed domain name, Complainant alleges. Complainant asserts that this diversion of Complainant’s business under its mark to Respondent’s competing business is evidence of Respondent’s bad faith registration and use of the <blackstone-sh.com> domain name. The Panel finds that diversion of Complainant’s business to a competing business constitutes bad faith registration and use on the part of Respondent in relation to its disputed domain name, pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant contends that Internet users seeking the services Complainant provides under its mark will be confused as to the sponsorship of or affiliation with Complainant to the website resolving from Respondent’s disputed domain name. The website resolving from the disputed domain name, Complainant asserts, displays the logo used by Complainant in relation to its BLACKSTONE mark and provides services which appear to an Internet user as similar to those services that Complainant offers. Complainant contends that Respondent profits from this confusion when Internet users interact with Respondent under the belief that they are interacting with Complainant. The Panel finds that commercial gain from a website, resolving from a confusingly similar domain name, that displays the mark and logo related to the mark of Complainant constitutes Respondent’s bad faith registration and use of the <blackstone-sh.com> domain name under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant alleges that Respondent is using the disputed domain name to resolve to a website that attempts to pass itself off as Complainant’s business. Complainant argues that this website displays Complainant’s BLACKSTONE mark and the logo related to its mark, that the disputed domain name is being used to fraudulently solicit funds from confused investors seeking Complainant’s services, and that Respondent had constructive knowledge of Complainant’s well-known mark in connection with financial services. The Panel finds that Respondent’s attempt to pass itself off as Complainant for fraudulent commercial gain is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackstone-sh.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 1, 2010
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