Blackstone TM L.L.C. v. tim parker
Claim Number: FA2202001986037
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is tim parker (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonecareerpathways.com>, (‘the Domain Name’) registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2022; the Forum received payment on February 26, 2022.
On March 1, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <blackstonecareerpathways.com> Domain Name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2022 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@blackstonecareerpathways.com. Also on March 1, 2022, 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 March 23, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant is the owner of the trade mark BLACKSTONE, registered, inter alia, in the USA for financial services with first use recorded as 1990.
Respondent registered the Domain Name in 2022 just 4 days after Complainant filed an application with the USPTO to register the mark BLACKSTONE CAREER PATHWAYS.
The Domain Name is confusingly similar to the Complainant’s registered BLACKSTONE mark containing it in its entirety and adding only the words ‘career’ and ‘pathways’ and the gTLD “.com” which do not prevent this confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name has not been used so there is no bona fide offering of goods or services or legitimate non commercial or fair use. It has been registered in opportunistic bad faith and has been offered for sale generally which is registration and use in bad faith under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark BLACKSTONE, registered, inter alia, in the USA for financial services with first use recorded as 1990.
Respondent registered the Domain Name in 2022 just 4 days after Complainant filed an application with the USPTO to register the mark BLACKSTONE CAREER PATHWAYS.
The Domain Name is being offered for sale generally.
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”).
The Domain Name consist of the Complainant's BLACKSTONE mark (which is registered in the USA for financial services with first use recorded as 1990), the word ‘career’ and ‘pathways’ and the gTLD “.com”.
The addition of ordinary words and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i).). Accordingly the panel holds that the addition of the words ‘career’ and ‘pathways’ and the gTLD “.com” does not prevent confusing similarity between the Complainant’s mark and the Domain Name.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Respondent is not authorized by the Complainant and does not appear to be commonly known by the 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 Domain Name containing the Complainant’s mark has been offered for sale generally which is not a bona fide offering of goods or services or a legitimate non commercial or fair use. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
The Respondent has not answered this complaint and has not explained why it should be entitled to register a domain name containing the Complainant’s mark which has a reputation for financial services and reflecting the Complainant’s prior use of BLACKSTONE CAREER PATHWAYS four days after the Complainant applied for registration of the latter trade mark in the USA.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Given the timing of the registration of the Domain Name four days after the Complainant applied for the registration of BLACKSTONE CAREER PATHWAYS as a trade mark in the USA it appears that the Domain Name has been registered in opportunistic bad faith in actual knowledge of the Complainant and its business, rights, services and unregistered trade mark BLACKSTONE CAREER PATHWAYS. Registration of a domain name that makes use of a complainant’s trademark application is evidence of opportunistic bad faith which is evidence of bad faith per Policy 4(a)(iii). See Taco Bell Corp. v. Jessica Terry, FA 1746740(Forum Sept. 26, 2017) (finding the respondent’s opportunistic registration of the <tacobellweddings.com> weeks after the complainant’s announcement and promotion of its wedding service sufficient for a finding of bad faith per Policy ¶ 4(a)(iii)).
The Domain Name containing the Complainant’s marks has been offered for sale generally. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith primarily for the purposes of profit and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackstonecareerpathways.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 24, 2022
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