Blackstone TM L.L.C. v. Andrei Alin
Claim Number: FA2212002024186
Complainant is Blackstone TM L.L.C. (“Complainant”), USA, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York. Respondent is Andrei Alin (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstone.financial>, registered with NameCheap, Inc..
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.
Ho-Hyun Nahm, Esq, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 15, 2022; Forum received payment on December 15, 2022.
On December 15, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <blackstone.financial> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2023 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@blackstone.financial. Also on December 19, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, Blackstone TM L.L.C., offers services in the financial industry. Complainant has rights in the BLACKSTONE mark through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,986,927, registered on July 16, 1996). The disputed domain name is identical or confusingly similar to Complainant’s BLACKSTONE mark as it incorporates the mark in its entirety while adding the “.financial” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BLACKSTONE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead offers services identical or closely related to Complainant while trading off of the goodwill associated with Complainant’s mark.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by causing initial interest confusion. Additionally, Respondent offers services identical or closely related to Complainant’s services while taking advantage of the confusion similarity between Complainant’s mark and the resolving webpage. Furthermore, Respondent had constructive knowledge of Complainant’s rights in the BLACKSTONE mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on October 2, 2022.
2. Complainant has established rights in the BLACKSTONE mark through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,986,927, registered on July 16, 1996).
3. The disputed domain name's resolving website displays a mark—semi-hidden in dark font towards the top of several pages—that is nearly identical to the BLACKSTONE mark, lists “Blackstone” as the author of articles on the site and offers financial services that are identical or nearly identical to the services offered by Complainant.
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 claims rights in the BLACKSTONE mark through its registration with multiple trademark organizations including the USPTO (e.g., Reg. No. 1,986,927, registered on July 16, 1996). Under Policy ¶ 4(a)(i), registration with multiple trademark organizations including the USPTO is generally sufficient to establish rights in a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Since Complainant has registered its mark with multiple trademark organizations including the USPTO, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant asserts the disputed domain name <blackstone.financial> is identical or confusingly similar to Complainant’s BLACKSTONE mark. Under Policy ¶ 4(a)(i), adding a gTLD is insufficient in differentiating from the mark incorporated into the domain name. The disputed domain name incorporates the mark in its entirety while merely adding the “.financial” gTLD, and thus the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BLACKSTONE mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The unmasked WHOIS information identifies Respondent as “Andrei Alin.” The Panel thus finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), offering services identical or confusingly related to complainant while trading off of a complainant’s goodwill is not a bona fide offering of goods or services, nor any noncommercial or fair use. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). Complainant has provided screenshots of the disputed domain name's resolving website, which displays a mark—semi-hidden in dark font towards the top of several pages—that is nearly identical to the BLACKSTONE mark, lists “Blackstone” as the author of articles on the site and offers financial services that are identical or nearly identical to the services offered by Complainant. Therefore, the Panel finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith by offering services identical or closely related to Complainant’s services while taking advantage of the confusion similarity between Complainant’s mark and the resolving webpage. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel notes again that the disputed domain name's resolving website displays a mark—semi-hidden in dark font towards the top of several pages—that is nearly identical to the BLACKSTONE mark, lists “Blackstone” as the author of articles on the site and offers financial services that are identical or nearly identical to the services offered by Complainant. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in the BLACKSTONE mark. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). 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.”).
The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the BLACKSTONE mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <blackstone.financial> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 16, 2023
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