Blackstone TM L.L.C. v. Steven
Claim Number: FA2301002027192
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Steven (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstone-fx.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 11, 2023; Forum received payment on January 11, 2023.
On January 13, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <blackstone-fx.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 January 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 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-fx.com. Also on January 13, 2023, 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 February 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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
Complainant made the following contentions.
Complainant asserts that, since 1985, Complainant has been a financial services company offering financial advisory services, credit services and other investment and asset management services. Complainant has rights in the BLACKSTONE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,986,927, registered July 16, 1996). See Amend Compl. Ex. 2. Respondent’s <blackstone-fx.com> domain name is identical or confusingly similar to Complainant’s BLACKSTONE mark as it merely adds the generic term “fx” and the “.com” generic top-level-domain name (“gTLD”).
Respondent lacks rights or legitimate interests in the <blackstone-fx.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the BLACKSTONE mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by resolving to a website that used a name and mark nearly identical to the Complainant’s mark on an unauthorized basis. Further, Respondent offers fake financial services to compete with Complainant.
Respondent registered and uses the <blackstone-fx.com> domain name in bad faith. Respondent intended to disrupt Complainant’s business by offering similar financial services in bad faith. Respondent had actual knowledge of Complainant’s rights to the BLACKSTONE mark prior to registering the disputed domain name as evidenced by Respondent’s resolving website offering similar financial services to those offered by Complainant. Respondent takes advantage of Complainant’s goodwill and brand recognition.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of financial advisory services, credit services and other investment and asset management services.
2. Complainant has established its rights in the BLACKSTONE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,986,927, registered July 16, 1996).
3. Respondent registered the <blackstone-fx.com> domain name on November 18, 2022.
4. Respondent has caused the disputed domain name to be used to offer fake financial services purportedly to compete with 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BLACKSTONE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,986,927, registered July 16, 1996). See Amend. Compl. Ex. 2. Registration of the mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated its rights in the BLACKSTONE mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLACKSTONE mark. Complainant argues Respondent’s <blackstone-fx.com> domain name is identical or confusingly similar to Complainant’s BLACKSTONE mark as it merely adds the generic term “fx” (an abbreviation of foreign exchange), a hyphen and the “.com” gTLD. The addition of a generic term, a hyphen and a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BLACKSTONE mark and to use it in its domain name;
(b) Respondent registered the <blackstone-fx.com> domain name on November 18, 2022;
(c) Respondent has caused the disputed domain name to be used to offer fake financial services purportedly to compete with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights or legitimate interests in the <blackstone-fx.com> domain name as Respondent is not commonly known by the disputed domain name nor engaged in legitimate business under the disputed domain name;
(f) Complainant has not authorized or licensed to Respondent any rights in the BLACKSTONE mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(g) Complainant argues that Respondent fails to use the <blackstone-fx.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use purpose as Respondent passes off as Complainant by offering similar investment services. Using a disputed domain name to offer services that are closely related to the services that Complainant offers is not a legitimate or bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant provides screenshots of Respondent’s resolving website, highlighting Respondent’s website prominently using a name and mark nearly identical to the BLACKSTONE mark and offering investment services that are similar or related to those offered by Complainant. See Amend. Compl. Ex. 5. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant contends that Respondent has not used the <blackstone-fx.com> domain name in connection with a bona fide offering of goods or services because the services offered by the Respondent are fake. The website of the disputed domain name advises users to contact the Respondent via an address located in the United States. However, the footer of the disputed domain name states that the services are not directed to residents of the United States. See Amend. Compl. Ex. 5. The offering of fake services is not a legitimate or bona fide offering of goods or services. See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(i) Complainant argues the disputed domain name resolves to a website that uses a name and mark nearly identical to the BLACKSTONE mark as well as offers investment services similar to those offered by the Complainant. Complainant argues that Respondent registered the disputed domain name to trade intentionally on the goodwill associated with the BLACKSTONE mark which is not a legitimate or bona fide offering of goods or services under the Policy. See Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”). As the Panel agrees, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that the use of the disputed domain name in connection with Respondent’s resolving website that offers financial services similar to Complainant is evidence of bad faith use and registration. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant by offering similar services can evince bad faith registration pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel notes that Complainant provided screenshots of the resolving website of the disputed domain name in which Respondent offers similar financial services to those of Complainant. See Amend. Compl. Ex. 5. Complainant argues that these services are fake. As the Panel agrees, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered and uses the <blackstone-fx.com> domain name in bad faith as Respondent registered a domain name that is confusingly similar to the BLACKSTONE mark. Complainant argues that the Respondent registered the disputed domain name with actual knowledge of Complainant’s mark in bad faith to capitalize on the confusion to the resolving website that offers similar services. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that the BLACKSTONE mark is so well recognized that the only explicable reason Respondent would have registered and used the <blackstone-fx.com> domain name would be for opportunistic bad faith. Registration of a confusingly similar domain name with opportunistic bad faith can evince bad faith registration and use per Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
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-fx.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 8, 2023
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