Blackstone TM L.L.C. v. Deborah E Shultz
Claim Number: FA1507001626951
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Deborah E Shultz (“Respondent”), Indiana, USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonecredit.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2015; the Forum received payment on July 1, 2015.
On July 2, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <blackstonecredit.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2015 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@blackstonecredit.com. Also on July 2, 2015, 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 July 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant The Blackstone Group owns the BLACKSTONE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,986,927, registered July 16, 1996). Complainant uses the BLACKSTONE mark to identify a wide variety of services in the financial industry, including, without limitation, asset management, corporate finance, financial advisory and credit services. The <blackstonecredit.com> domain name is confusingly similar to the BLACKSTONE mark. The domain name includes the descriptive term “credit” and adds a generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Respondent is neither a licensee of Complainant, nor has Respondent ever been authorized to use the BLACKSTONE mark. Respondent’s lack of rights or legitimate interests in the <blackstonecredit.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the <blackstonecredit.com> domain name to make an offering of loan and credit services. However, Respondent is apparently using the disputed domain name in conjunction with a money wire transfer scam. Respondent also uses the disputed domain name to phish for Internet users’ personal information.
Respondent has engaged in bad faith registration and use of the <blackstonecredit.com> domain name. Respondent’s registration and use of the disputed domain name competes with and disrupts Complainant’s business. Respondent uses the domain name to engage in a fraudulent scheme. Further, Respondent is “phishing” for users’ personal information through the disputed domain name. Respondent had knowledge of Complainant’s rights in the BLACKSTONE mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <blackstonecredit.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(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.”).
Complainant, The Blackstone Group, states that it owns the BLACKSTONE mark through its registration with the USPTO (e.g., Reg. No. 1,986,927, registered July 16, 1996). Complainant contends that it uses the BLACKSTONE mark to identify a wide variety of services in the financial industry, including, without limitation, asset management, corporate finance, financial advisory and credit services. Prior Panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel finds that Complainant’s USPTO registration is sufficient to establish its rights under Policy ¶ 4(a)(i).
Complainant argues that the <blackstonecredit.com> domain name is confusingly similar to the BLACKSTONE mark. The domain name is created by adding the descriptive term “credit” and the gTLD “.com” to the mark. Past panels have found that the addition of a descriptive term does not sufficiently distinguish the disputed domain name from the registered mark, particularly when the chosen term is related to a complainant’s business and may serve to enhance confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Further, past panels have also found that the addition of a gTLD does nothing to negate confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As such, the Panel determines 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly known by the disputed domain name, and Respondent is not a licensee of Complainant, nor has Respondent ever been authorized to use the BLACKSTONE mark. The WHOIS information for the disputed domain name lists “Deborah E Shultz” as the registrant of record. Lacking any evidence to the contrary from Respondent, the Panel finds that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <blackstonecredit.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the <blackstonecredit.com> domain name to purport its offering of loan and credit services. However, Complainant states that Respondent is apparently using the disputed domain name in conjunction with a money wire transfer scam. Complainant has provided evidence of Respondent’s use of an e-mail address connected to the disputed domain name to carry out an act of wire transfer fraud. Previous panels have found that use of a disputed domain name to perpetrate consumer fraud is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Tyco Int’l Services GmbH v. TYCOINT SCOT, FA 1590501 (Nat. Arb. Forum Dec. 22, 2014) (finding no rights or legitimate interests where the disputed domain name was used to impersonate the complainant in e-mail messages in connection with a fraudulent scheme aimed at the complainant’s customers). The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the disputed domain name to phish for Internet users’ personal information. According to Complainant, Respondent seeks out personal and confidential information from “potential employees” during the application process for the purported loan officer positions. Past panels have found that the use of a confusingly similar domain name to “phish” for users’ personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent’s involvement in a phishing scheme is further evidence that Respondent lacks 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).
Complainant has proved this element.
Complainant contends that Respondent’s registration and use of the disputed domain name competes with and disrupts Complainant’s business. According to Complainant, Respondent uses the disputed domain name to resolve to a website that purports to offer financial services related to those services offered by Complainant, and such use is disruptive to Complainant’s business. Past panels have found bad faith where respondents offer competing services through a confusingly similar domain name. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iii).
Complainant argues that Respondent uses the domain name to engage in a fraudulent scheme. Complainant has provided evidence that consumers have been defrauded or have nearly fallen victim to Respondent’s fraudulent activities in its exhibits. Past panels have found that use of a confusingly similar domain name and its associated e-mail addresses to exploit confusion in order to perpetrate fraud is evidence of bad faith. See SHUAA Capital psc v. SHUAA CAPITAL, FA 1581256 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages sent to third parties in an attempt to exploit such confusion, is indicative of bad faith”). Therefore, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent is “phishing” for users’ personal information through the disputed domain name. According to Complainant, Respondent seeks out personal and confidential information from “potential employees” during the application process for the purported loan officer positions. Past panels have found that the use of a confusingly similar domain name to “phish” for users’ personal information is evidence of bad faith use under Policy ¶ 4(a)(iii). See 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). Therefore, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent had knowledge of Complainant’s rights in the BLACKSTONE mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). Complainant contends that it has a long and well established reputation, and there can be no doubt that Respondent was aware of Complainant’s BLACKSTONE mark when it chose and registered the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
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 <blackstonecredit.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 29, 2015
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