Blackstone TM L.L.C. v. Ernesto Vargas / consumer-legal-centers.com
Claim Number: FA1401001541372
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Ernesto Vargas / consumer-legal-centers.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstone-lawyers.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 National Arbitration Forum electronically on January 29, 2014; the National Arbitration Forum received payment on January 29, 2014.
On January 30, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <blackstone-lawyers.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 January 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2014 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-lawyers.com. Also on January 31, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has been in business since 1985, and is a renowned financial services company. Complainant manages corporate private equity funds, real estate funds, and marketable alternative asset management funds. Complainant operates its own website located at <blackstone.com>.
Complainant has rights in the BLACKSTONE mark, used in connection with financial and related services. Complainant owns registrations for the BLACKSTONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,986,927 registered July 16, 1996).
Respondent’s <blackstone-lawyers.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “lawyers,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have any rights or legitimate interests in the <blackstone-lawyers.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BLACKSTONE mark in any way. Respondent is using the <blackstone-lawyers.com> domain name to compete with Complainant. The dispute domain name resolves to a website offering services related to those offered by Complainant. The website refers to a company called “Blackstone Consultant and Strategies” that gives “an easy and stress-free process for property owners, property managers, attorneys, brokers, loss mitigation centers, loan modification companies, HUD counselors.”
Respondent is attempting to pass itself off as Complainant. The <blackstone-lawyers.com> domain name utilizes trademarks nearly identical to Complainant’s to market services that are related to those offered by Complainant. Respondent is also attempting to phish for personal information of Internet users. On the “Contact Us” and loan modification pages on Respondent’s website, there are forms encouraging Internet users to disclose personal information, including social security numbers.
Respondent registered and is using the <blackstone-lawyers.com> domain name in bad faith. Respondent is attempting to pass itself off as Complainant. The <blackstone-lawyers.com> domain name utilizes trademarks nearly identical to Complainant’s to market services that are related to those offered by Complainant. Respondent is attempting to phish for personal information of Internet users. On the “Contact Us” and loan modification pages on Respondent’s website, there are forms encouraging Internet users to disclose personal information, including social security numbers. Respondent is using a confusingly similar domain name to set up a fake business and engage in a scheme to defraud consumers. Respondent had knowledge of Complainant’s mark prior to registering the <blackstone-lawyers.com> domain name because Complainant’s mark has a long and well established reputation throughout the world and Respondent’s use of the disputed domain name indicates Respondent was intending to capitalize on the confusion of Internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for the BLACKSTONE mark.
Respondent is not affiliated with Complainant and had not been authorized to use the BLACKSTONE mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in BLACKSTONE.
The dispute domain name addresses a website offering services related to those offered by Complainant.
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the BLACKSTONE mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The at-issue domain name contains Complainant’s BLACKSTONE mark in its entirety, adds a hyphen, suffixes the suggestive term “lawyers” thereto, and appends the top-level domain name, “.com,” to the resulting string. However, the slight differences between the Complainant’s mark and the at-issue domain name fail to distinguish the two for the purposes of Policy ¶4(a)(i). Therefore the Panel concludes that the at-issue <blackstone-lawyers.com> domain name is confusingly similar to Complainant’s MGM GRAND trademark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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 the at‑issue 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 affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “Ernesto Vargas” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <blackstone-lawyers.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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 domain name addresses a website offering services related to those offered by Complainant. The website refers to a company called “Blackstone Consultant and Strategies” that gives “an easy and stress-free process for property owners, property managers, attorneys, brokers, loss mitigation centers, loan modification companies, HUD counselors.” Using the confusing similar domain name in this manner does not demonstrate either bona fide offering of goods or services under Policy ¶ 4(c)(i) or a under Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Furthermore, the <blackstone-lawyers.com> domain name utilizes marks nearly identical to Complainant’s to market services that are related to those offered by Complainant apparently in an attempt to pass itself off as Complainant, and phishes for personal information of Internet users. Such uses of a confusingly similar domain name are repugnant to the enumerated conditions which may demonstrate that a respondent has rights or interests in a domain name set out in Policy ¶4(c). 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, HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, the at-issue domain name addresses a website that utilizes marks nearly identical to Complainant’s to market services that are related to those offered by Complainant. Using the domain name in this manner is disruptive to Complainant’s business and evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010) (finding use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant); see also, Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Next, Respondent’s <blackstone-lawyers.com> website flaunts pages where users may submit personal information via contact and loan modification forms. Such personal information includes the users’ social security numbers. These circumstances are indicative of a phishing scheme and thereby demonstrate Respondent’s bad faith under the Policy. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Dec. 13, 2007) (defining phishing as “a practice that is intended to defraud consumers into revealing personal and proprietary information.”); see also, Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Similarly, Respondent’s use of a confusingly similar domain name to promote a business to defraud consumers is disruptive to Complainant’s legitimate business interests and compels a finding of bad faith registration and use of the domain name under the Policy. See Mintel Group Ltd. v. N/A / Thomas Fuller, FA 1433204 (Nat. Arb. Forum April 20, 2012) (finding bad faith where the respondent used to the disputed domain name to operate a mystery shopper program that defrauded individuals).
Finally, Respondent had knowledge of Complainant’s rights in the BLACKSTONE mark prior to registering the at-issue domain name. Respondent’s combining of Complainant’s mark with the suggestive term “lawyers” and its use of the domain name to address a website which competes with Complainant urges that Respondent knew of Complainant’s trademark at the time it registered the at-issue domain name. Importantly, Respondent’s prior knowledge of Complainant's BLACKSTONE trademark shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. 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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
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-lawyers.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 27, 2014
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