Blackstone TM L.L.C. v. Ninik Sudarwati
Claim Number: FA1901001827284
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Ninik Sudarwati (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonepte.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2019; the Forum received payment on January 28, 2019.
On January 29, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <blackstonepte.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 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2019 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@blackstonepte.com. Also on January 30, 2019, 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 February 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Blackstone TM L.L.C., is a world-renowned financial services company. Complainant has rights in the BLACKSTONE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,986,927, registered July 16, 1996). Respondent’s <blackstonepte.com>[i] is confusingly similar to Complainant’s BLACKSTONE mark as Respondent merely adds the generic or descriptive corporate designation term “pte” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
2. Respondent does not have rights or legitimate interests in the <blackstonepte.com> domain name. Respondent is not permitted or licensed to use Complainant’s BLACKSTONE mark and is not commonly known by the domain name.
3. Additionally, Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <blackstonepte.com> domain name to impersonate Complainant in furtherance of a fraudulent, phishing scheme. In addition, Respondent uses the <blackstonepte.com> domain name to redirect users to Complainant’s official website.
4. Respondent has registered and uses the <blackstonepte.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by creating initial interest confusion at the domain name’s resolving website. Further, Respondent is attempting to attract, for commercial gain, Internet users to its website by passing off as Complainant via emails in furtherance of a phishing scheme. Additionally, Respondent used a privacy service to conceal its identity.
5. Finally, Respondent had actual knowledge or constructive notice of Complainant’s BLACKSTONE mark prior to registering the <blackstonepte.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BLACKSTONE mark. Respondent’s domain name is confusingly similar to Complainant’s BLACKSTONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <blackstonepte.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 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 (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 has rights to the BLACKSTONE mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes 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)). Complainant has provided copies of its USPTO registrations for the BLACKSTONE mark (e.g., Reg. No. 1,986,927, registered July 16, 1996).
Complainant next claims that Respondent’s <blackstonepte.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name containing that mark and the mark itself under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); 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). Respondent merely adds the term “pte” and a “.com” gTLD to Complainant’s BLACKSTONE mark. The Panel holds that the <blackstonepte.com> does not contain changes that would sufficiently distinguish it from the BLACKSTONE mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <blackstonepte.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <blackstonepte.com> domain name as Respondent is not authorized to use Complainant’s BLACKSTONE mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a domain name, especially where a privacy service has been engaged. 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.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, a lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark also supports a finding that a respondent does not have rights or legitimate interests in a 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 identifies the registrant as “Ninik Sudarwati.” There is no evidence in the record to show that Respondent was authorized to use Complainant’s BLACKSTONE mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <blackstonepte.com> domain name.
Moreover, Complainant argues that Respondent is not using the <blackstonepte.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of an email address associated with a domain name incorporating the mark of another to pass off as that party in furtherance of a phishing scheme is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant has shown that Respondent uses an email address associated with the <blackstonepte.com> domain name to impersonate Complainant and sends phishing e-mails to Complainant’s customers that are designed to solicit payment information under false pretenses. Complainant has provided evidence to support its claim. Thus, the Panel holds that Respondent’s use of the <blackstonepte.com> domain name for the foregoing purpose indicates it lacks rights and legitimate interests in the <blackstonepte.com> domain name per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <blackstonepte.com> domain name in bad faith as Respondent attempts to disrupt Complainant’s business. Specifically, Complainant has shown that Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme amounts to bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (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). Therefore, the Panel holds that Respondent registered and uses the <blackstonepte.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s BLACKSTONE mark. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to Respondent’s use of Complainant’s famous BLACKSTONE mark and Respondent’s impersonation of Complainant, Respondent had actual knowledge of Complainant’s BLACKSTONE mark. The Panel agrees.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackstonepte.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 3, 2019
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