Blackstone TM L.L.C. v. Johnal Simpson
Claim Number: FA2012001925693
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Johnal Simpson (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstoneuk.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2020; the Forum received payment on December 18, 2020.
On December 21, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <blackstoneuk.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 December 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2021 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@blackstoneuk.com. Also on December 22, 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 January 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the BLACKSTONE mark established through its portfolio of service mark registrations described below and the goodwill that is acquired through extensive use of the mark in its asset management businesses since 1985 including on the Internet. Complainant is headquartered in New York City and also has offices worldwide, including in Baltimore, Houston, Los Angeles, San Francisco, Toronto, London, Paris, Frankfurt, Mumbai, Dubai, Singapore, Seoul, Shanghai, Sydney, Tokyo, Hong Kong, Beijing, Dublin, Dusseldorf, Luxembourg, Mexico City and Sao Paulo, employing over 2,500 people worldwide.
Complainant submits that the disputed domain name is virtually identical and confusingly similar to Complainant’s BLACKSTONE service mark and argues that the additional of the descriptive term “UK” in the disputed domain name does nothing to distinguish it from Complainant’s mark. Blackstone TM L.L.C. v. Anna Boldoreva / Phisical Face, FA 1889989 (Forum Apr. 30, 2020) (<blackstonerussia.com> confusingly similar to BLACKSTONE Marks).
Complainant adds that, to the contrary, the term “UK” describes a location where Complainant has offices and conducts businesses and thus enhances the confusing similarity.
Complainant further submits that the addition of the generic Top-Level Domain (“gTLD”) extension is irrelevant in distinguishing the disputed domain name and Complainant’s mark. Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name).
Complainant submits that Respondent has no rights are legitimate interests in the disputed domain name arguing that respondent is not commonly known by either the disputed domain name or Complainant’s BLACKSTONE mark. SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY’S name).
Complainant adds that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the BLACKSTONE mark. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Complainant refers to a screenshot of the website to which the disputed domain name resolves which purports to be maintained by a company called “Blackstone UK” and purports to offer financial and investment services related to those offered by, or the type that consumers would expect to originate from Complainant.
Complainant further refers to a screenshot of the Facebook page of Blackstone UK which uses a stylized letter “B” that is identical to that in Complainant’s logo and a “B” favicon long used by Complainant. Complainant submits that Respondent has told potential clients that it was affiliated with Complainant,
Complainant states that one of these potential clients reported this impersonation to Complainant and alleged that Blackstone UK was engaged in a fraud and that the company services were fake. Complainant has confirmed that Blackstone UK is not registered with the UK financial conduct authority, apparently operating therefore in violation of UK law.
Complainant alleges that in such circumstances the disputed domain name is not being used the bona fide offering of goods or services offer any legitimate business or purpose, but instead to impersonate Complainant and defraud consumers. Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”).
Even in the absence of evidence of fraud and impersonation, the use of the disputed domain name to resolve to a website offering services that are closely related to those services offered by Complainant is not a legitimate or bona fide use of a domain name. See FC Online Marketing, Inc. v. Brett Ray, FA 1643100 (Forum Nov. 19, 2015) (use of confusingly similar domain name “to market, for commercial gain, services similar to those of Complainant,” was not bona fide or legitimate use).
Complainant submits that the disputed domain name was registered and is being used in bad faith; that it is clearly more than a coincidence that Respondent chose and registered a domain name is confusingly similar to Complainant’s BLACKSTONE mark because Complainant has a long and well-established reputation in the use of the mark in the financial and asset management services industries throughout the world.
Complainant adds that it’s mark is so well-known that Respondent would be hard pressed to provide any legitimate explanation for registering the disputed domain name other than take advantage of the goodwill and brand recognition associated with Complainant and its BLACKSTONE mark. Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
Complainant further alleges that Respondent’s use of the confusingly similar domain name in connection with Respondent’s website, which purported to offer financial services similar to those that have been long offered by Blackstone is further evidence of bad faith use and registration. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the … domain name in bad faith pursuant to Policy ¶… 4(b)… (iv) because Respondent is using a domain name that is confusingly similar to the … [complainant’s] mark for commercial benefit by diverting Internet users to the …[respondent’s] website, which sells competing goods and services”).
Complainant also contends that by using at the disputed domain name to impersonate Complainant, Respondent is causing consumer confusion in order to commit fraud on investors and alleges Respondent seeks to falsely suggests that it is somehow endorsed by or affiliated with Complainant. Such false association, passing off and fraud in violation of Complainant’s intellectual property rights is further evidence of bad faith use and registration. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that disputed domain name was registered and used in bad faith where 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”).
Complainant contends that Respondent’s use of the disputed domain names disrupts the business of Complainant, which is additional evidence of bad faith use and registration. See Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion).
In conclusion Complainant argues that because it’s BLACKSTONE marks are well known and registered in many countries throughout the world, Respondent is presumed to have had constructive knowledge of Blackstone’s BLACKSTONE marks at the time he or she registered the confusingly similar domain names. This knowledge indicates Respondent’s bad faith use and registration. See Carnival Plc v. Belize Domain WHOIS Service Lt, FA 997973 (Forum July 17, 2007) (constructive knowledge of mark due to federal registration is evidence of bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services using the Blackstone mark for which it owns following portfolio of service mark registrations:
· United States service mark registration THE BLACKSTONE GROUP, registration number 2,198,568, registered on the Principal Register on October 20, 1998 for services in international class 36;
· United States service mark registration BLACKSTONE, registration number 2,374,887 registered on the Principal Register on August 8, 2000 for services in international class 36;
· United States service mark registration BLACKSTONE, registration number 4,146,432 registered on the Principal Register on May 22, 2012 for services in international class 35;
· United States service mark registration Blackstone, registration number 5,316,226 registered on the Principal Register on October 24, 2017 for services in international class 41.
Complainant has an established Internet presence and maintains its website At <www.blackstone.com>.
The disputed domain name was registered on October 18, 2020 and resolves to our website that purports to offer cryptocurrency trading services. The published WHOIS states that the registrant of the disputed domain name is “GDPR Masked”. The Registrar confirms that Respondent is the registrant.
There is no information available about Respondent except that which is provided in the Complaint and the response by the Registrar to the Forum’s request for verification of the registration details of the disputed domain name the course of this proceeding.
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 provided uncontested convincing evidence of its rights in the BLACKSTONE mark established through its portfolio of service mark registrations described above and the goodwill that it has accrued in the mark to extensive use in its asset management businesses since 1985 now employing over 2,500 people worldwide.
The disputed domain name consists of Complainant’s BLACKSTONE service mark in combination with the geographical place name “UK” and the gTLD <.com> extension.
Complainant’s mark is the initial, dominant and only distinctive element in the disputed domain name. The geographical designation adds no distinctive character to the disputed domain name and the gTLD element may be ignored for the purposes of comparison in the circumstances this case as it would be considered as a necessary technical element for a domain name.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights are legitimate interests in the disputed domain name alleging that:
· Respondent is not commonly known by either the disputed domain name or Complainant’s BLACKSTONE mark
· Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the BLACKSTONE mark;
· the screenshot of the website to which the disputed domain name resolves which purports to be maintained by a company called “Blackstone UK” and purports to offer financial and investment services related to those offered by, or the type that consumers would expect to originate from Complainant;
· Respondent’s use of the stylized letter “B” that is identical to that in Complainant’s logo and a “B” favicon on its Facebook and Instagram accounts are identical to those long used by Complainant;
· Respondent is using the disputed domain name to create the impression that its website and social media accounts are those of Complainant;
· Complainant has confirmed that Blackstone UK is not registered with the UK financial conduct authority, apparently operating therefore in violation of UK law.
· in such circumstances the disputed domain name is not being used the bona fide offering of goods or services offer any legitimate business or purpose, but instead to impersonate Complainant and defraud consumers.
It is well established that where a complainant makes out a prima facie case, the burden of production shifts to a respondent to establish that it has such right or legitimate interests in the disputed domain name. Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Because of the established reputation of Complainant, its name and BLACKSTONE mark in the financial services industry including on the Internet; the almost identical character of the disputed domain name; Respondent’s failure to provide any response or explanation in relation to the allegations made by Complainant; and the fact that Respondent is using the disputed domain name is a website address in combination with social media accounts in a manner that appears to be designed to impersonate Complainant, this Panel finds that the disputed domain name was registered in bad faith. It is implausible that Respondent was unaware of Complainant, its name, mark, reputation and goodwill, including its established Internet presence, and the disputed domain name was registered. The balance of probabilities therefore the disputed domain name was registered to target and take unfair advantage of Complainant, it’s mark and reputation.
Complainant has alleged that has not provided any evidence that a third-party has complained that the disputed domain name is being used for the purposes of fraud.
Nonetheless the evidence that has been reduced clearly shows that Respondent is using the disputed domain name the manner the purports to create the mind of Internet users. Misleading impression that there is an association between the disputed domain name, Respondents website and social media accounts and Complainant. Such use is sufficient to allow this Panel to find on the balance of probabilities that the disputed domain name is being used in bad faith.
As this Panel has found that the disputed domain name has been registered and has been used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii). Complainant is therefore entitled to relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackstoneuk.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 15, 2021
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