Blackstone TM L.L.C. v. Anna Boldoreva / Phisical Face
Claim Number: FA2003001888748
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is Anna Boldoreva / Phisical Face (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonereprestent.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 March 18, 2020; the Forum received payment on March 18, 2020.
On March 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <blackstonereprestent.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 March 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2020 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@blackstonereprestent.com. Also on March 20, 2020, 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 April 13, 2020, 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 company offering financial and investment management services. Complainant has rights in the BLACKSTONE mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,986,927, registered July 16, 1996).
2. Respondent’s <blackstonereprestent.com>[i] domain name is identical or confusingly similar to Complainant’s BLACKSTONE mark as it contains the BLACKSTONE mark in its entirety and merely adds the misspelled, generic term “represtent” and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <blackstonereprestent.com> domain name. Respondent is not commonly known by the domain name and is not authorized or permitted to use Complainant’s BLACKSTONE mark.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to disrupt Complainant’s business by impersonating Complainant in furtherance of a phishing scheme.
5. Respondent registered and uses the <blackstonereprestent.com> domain name in bad faith. Respondent attracts, for commercial gain, internet users to the domain name and then impersonating Complainant in furtherance of a phishing scheme.
6. Respondent also knew of Complainant’s rights in the BLACKSTONE mark at the time of registration and took advantage of the brand recognition associated with Complainant.
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 <blackstonereprestent.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 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 has rights in the BLACKSTONE mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,986,927, registered July 16, 1996). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <blackstonereprestent.com> domain name is confusingly similar to Complainant’s mark because the domain name incorporates the BLACKSTONE mark in its entirety and merely adds the misspelled, generic term “represtent” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the <blackstonereprestent.com> domain name is confusingly similar to Complainant’s 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 <blackstonereprestent.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 does not have rights or legitimate interests in the <blackstonereprestent.com> domain name as Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use the BLACKSTONE mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that domain name. 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). The WHOIS information for the <blackstonereprestent.com> domain name shows that the registrant’s name is “ANNA BOLDOREVA/Phisical Face” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the domain name. Therefore, the Panel holds that Respondent is not commonly known by the <blackstonereprestent.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims Respondent fails to use the <blackstonereprestent.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to impersonate Complainant to obtain Internet users’ private information via a phishing scheme. Attempting to pass off as a complainant by replicating a complainant’s website to confusing Internet users and obtain their information is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant supports this claim by providing screenshots of the website Respondent’s domain name resolves to, which copies content from Complainant’s website, contains links to Complainant’s website, and features an “Investor Portal” where clients are asked to give personal information. Thus, the Respondent’s use of the <blackstonereprestent.com> domain name indicates it lacks rights and legitimate interests in the <blackstonereprestent.com> domain name per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <blackstonereprestent.com> domain name in bad faith by passing off as Complainant for financial gain. Using a domain name incorporating the mark of another to resolve to a website which the respondent passes off as a complainant in furtherance of phishing is evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant has provided evidence that Respondent registered the <blackstonereprestent.com> domain name to pass off as Complainant in order to confuse Internet users and gain their information. This is evidence Respondent registered and uses the <blackstonereprestent.com> domain name in bad faith under Policy ¶ 4(b)(iv).
The record indicates that Respondent registered the <blackstonereprestent.com> domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark is sufficient. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Because Respondent’s resolving website copies content from Complainant’s website, contains links to Complainant’s website, and features an “Investor Portal” where clients are asked to give personal information, Respondent must have been aware of Complainant and its BLACKSTONE prior to registering the <blackstonereprestent.com> domain name. The Panel holds that Respondent had actual knowledge of Complainant’s rights in the BLACKSTONE mark prior to registering the <blackstonereprestent.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
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 <blackstonereprestent.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 17, 2020
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