Blackstone TM L.L.C. v. Dave Wayman
Claim Number: FA2109001963302
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Dave Wayman (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bstonetechs.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2021; the Forum received payment on September 10, 2021.
On September 13, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bstonetechs.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 September 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@bstonetechs.com. Also on September 14, 2021, 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 October 5, 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 claims rights in the BLACKSTONE mark acquired by its ownership of its portfolio of trademark registrations described below.
Complainant claims that its group of companies has an extensive reputation and has grown to become a world-renowned financial services company with hundreds of billions of dollars’ worth of assets under management. Headquartered in New York City and also has offices worldwide, providing asset management services including investment vehicles focused on private equity, real estate, public debt and equity, non-investment grade credit, real assets and secondary funds, all on a global basis.
Complainant submits that the disputed domain name is confusingly similar to the BLACKSTONE mark in which it has rights, arguing that the element “bstone” in the disputed domain name is an abbreviation of Complainants mark.
Complainant refers to a number of decisions given in similar circumstances such as Morgan Stanley v. Zhao Yun, FA 1877638 (Forum Feb. 12, 2020) (MSTANLEYGLOBAL.COM confusingly similar to MORGAN STANLEY mark); Morgan Stanley v. gary oldman, FA 1901057 (Forum July 16, 2020) (mstanleysec-us.com confusingly similar to MORGAN STANLEY mark); Morgan Stanley v. White, FA1906001846927 (Forum July 4, 2019) (MSTANLY.COM confusingly similar to MORGAN STANLEY mark).
Complainant adds that the disputed domain name was used to impersonate Complainant, as described more particularly below and argues that such use illustrates that there is a confusing similarity. See Morgan Stanley v. Liam Murphy / Murphy IT Services, FA 1832448 (Forum Apr. 8, 2019) (finding confusing similarity where disputed domain name contained abbreviation of Complainant’s mark used to impersonate Complainant and engage in phishing); Research In Motion Limited v. Georges Elias, D2009-0218 (WIPO Apr. 27, 2009) (confusing similarity where “[t]he Panel is in little doubt in this case that the Respondent intended to target the Complainant's marks”).
Complainant also submits that the addition of the descriptive term “techs” (short for technology) does nothing to distinguish the disputed domain name from the BLACKSTONE mark.. See Blackstone TM L.L.C. v. Anna Boldoreva / Phisical Face, FA 1889989 (Forum Apr. 30, 2020) (<blackstonerussia.com> confusingly similar to BLACKSTONE Marks).
It’s further submitted that the addition of the generic Top Level Domain (“gTLD”) extension <.com> in the domain name is irrelevant in distinguishing the disputed domain name from Complainant’s BLACKSTONE mark.
Complainant submits that Respondent has no rights or legitimate interests in respect of the domain name arguing that upon information and belief, Respondent did not actually engage in any legitimate business or commerce under the BLACKSTONE Marks or the disputed domain name, prior to the time that Complainant established rights in its BLACKSTONE marks.
Complainant adds that Respondent has not been commonly known by either the BLACKSTONE mark or the disputed domain name. See 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 asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the BLACKSTONE mark or the disputed domain name. Indeed, Respondent has no relationship whatsoever to Blackstone. See 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).
Referring to redacted copies of emails which have been submitted in evidence in an annex to the Complaint, Complainant submits that they show that the disputed domain name is being used to impersonate Complainant. The redacted email chain shows that Respondent sent emails that purported to offer fake job opportunities to the addressee. The addressee became suspicious and reported this impersonation to Complainant. Respondent and the addressee exchanged several messages were exchanged in the course of which the addressee was requested to provide personal information to Respondent at an email address created using the disputed domain name. Respondent sent the email, claiming to be a named “Senior Hiring Manager” of “Blackstone Technology Group”. Respondent listed Complainant’s actual office address and provided the addressee with a fake offer letter purportedly from Complainant’s actual CEO.
Complainant submits that such use of the disputed domain name to impersonate and create a false connection with Complainant, to defraud consumers and phish for personal information is not a legitimate use of the domain name or bona fide offering of goods and services. See 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”).
Complainant then argues that the disputed domain name was registered and is being used in bad faith, submitting that it is clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s BLACKSTONE mark.
Complainant argues that because it has a long and well established reputation in the BLACKSTONE mark through its extensive use in the financial and asset management services industries, including in connection with investments, throughout the world, there can be no doubt that the registrant was aware of the BLACKSTONE mark when the disputed domain name was registered.
Complainant submits that the disputed domain name was chosen and registered because of its confusingly similarity to Complainant’s well-known marks intending to capitalize on that confusion to attract Internet users to the resolving website for similar services. Complainant submits that this alone constitutes evidence of bad faith of a registration of a domain. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM).
Complainant further submits that Respondent would be hard-pressed to provide any legitimate explanation for registering the disputed domain name other than to take advantage of the goodwill and brand recognition associated with its famous BLACKSTONE mark. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith).
Complainant adds that by using at the disputed domain name to impersonate Complainant and to cause consumer confusion, as described above, Respondent seeks to falsely suggests that it is somehow endorsed by or affiliated with Complainant which constitutes bad faith use and registration under the Policy. 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 further submits that such use of the disputed domain name is causing initial interest confusion, and because of Complainant’s portfolio of registered trademarks, Respondent is presumed to have had constructive knowledge of Complainant’s BLACKSTONE mark at the time the disputed domain name was registered and used. 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 financial services company and has produced evidence of its ownership of the following United States trademark registrations:
· United States service mark BLACKSTONE, registration number 6,359,899, registered on the Principal Register on May 25, 2021 for services in international class 35;
· United States service mark BLACKSTONE, registration number 6,359. 897, registered on the Principal Register on May 25, 2021 for services in international class 35;
· United States service mark BLACKSTONE LAUNCHPAD, registration number 5,316,226 registered on the Principal Register on October 24, 2017 for services in international class 41;
· United States service mark BLACKSTONE ENTREPRENEURS NETWORK, registration number 4,146, 432, registered on the Principal Register on May 22, 2012 for services in international class 35.
Complainant also claims rights in other United States service mark registrations dating back to 1996, 1998, 2000 but these are registered in the name of Blackstone Financial Services Inc.
Complainant has an established Internet presence and maintains a website to which its domain name <blackstone.com> resolves.
The disputed domain name was registered on August 24, 2021 and has been used to create an email account from which Respondent has sent emails impersonating Complainant’s group of companies by purporting to be from a named “Senior Hiring Manager” of “Blackstone Technology Group”.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name.
Respondent has availed of a privacy service to conceal his identity and the Registrar has confirmed that Respondent is the registrant of the disputed 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(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 clear and convincing evidence of its rights in the BLACKSTONE mark acquired by its ownership of its portfolio of trademark registrations described above.
The disputed domain name consists of the elements “bstone”, “techs” and the gTLD extension <.com>.
While the entire word BLACKSTONE does not appear in the disputed domain name, in context this Panel accepts Complainant’s submission that the element “bstone” in the disputed domain name is intended to be and is likely to be perceived as an abbreviation of Complainants mark.
This Panel accepts also that the term “techs”, being short for technology. does not distinguish the disputed domain name from Complainant’s mark. See Blackstone TM L.L.C. v. Anna Boldoreva / Phisical Face, FA 1889989 (Forum Apr. 30, 2020) (<blackstonerussia.com> confusingly similar to BLACKSTONE Marks).
In the circumstances of this Complaint, the gTLD extension <.com> would be considered a technical requirement for a domain name with no distinguishing character.
Complainant has therefore shown that the disputed domain name is confusingly similar to the BLACKSTONE mark in which Complainant has rights. 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 or legitimate interests in the disputed domain name arguing that:
· upon information and belief, Respondent did not actually engage in any legitimate business or commerce under the BLACKSTONE marks or the disputed domain name, prior to the time that Complainant established its trademark rights;
· Respondent has not been commonly known by either the BLACKSTONE mark or the disputed domain name;
· Respondent is not a licensee of Complainant;
· Respondent has not been authorized by Complainant to register or use the BLACKSTONE mark or the disputed domain name;
· Respondent has no relationship whatsoever with Complainant;
· The redacted copies of emails which have been submitted in evidence in an annex to the Complaint, show that the disputed domain name is being used to send emails impersonating Complainant and misleading an unsuspecting recipient with a fake offer of employment in order to extract personal information under false pretenses.
That such misuse of the disputed domain name to defraud consumers and phish for personal information is not a legitimate use of the domain name or bona fide offering of goods and services.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, the burden of production shifts to the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production and so this Panel must find that the Complainant has proven on the balance of probabilities 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).
This Panel accepts that it is clearly more than a coincidence that the disputed domain name that is confusingly similar to Complainant’s BLACKSTONE mark was chosen and registered for any purpose other than to target and take predatory advantage of Complainant, its trademark and goodwill.
Complainant’s trademark rights predate the registration of the disputed domain name. Furthermore the disputed domain name was registered on August 24, 2021 and the undisputed and credible evidence adduced by Complainant proves on the balance of probabilities that by August 30, 2021 it was being used by Respondent as an email address to carry out the phishing attempt described above.
This Panel finds therefore that Respondent is using the disputed domain name in bad faith to impersonate Complainant and to cause consumer confusion for the purposes of phishing for disclosure of personal data by an unsuspecting recipient as described above.
As this Panel has found that the disputed domain name was registered and is being used in bad faith. Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the remedy 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 <bstonetechs.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 7, 2021
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