Blackstone TM L.L.C. v. Odille Marthe Bonneville / Europa Finance Line
Claim Number: FA2301002028888
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., USA. Respondent is Odille Marthe Bonneville / Europa Finance Line (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackinvestonefunds.com> (“Domain Name”), registered with Wix.com Ltd..
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint in both French and English to Forum electronically on January 24, 2023; Forum received payment on January 24, 2023.
On January 30, 2023, Wix.com Ltd. confirmed by e-mail to Forum that the <blackinvestonefunds.com> domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. 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 31, 2023, Forum served the French Complaint and all Annexes, including a French Written Notice of the Complaint, setting a deadline of February 21, 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@blackinvestonefunds.com. Also on January 31, 2023, the French 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 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.
The language of the Registration Agreement in this case is French. The Complaint has been provided in English and French and Complainant has indicated that pursuant to UDRP Rule 11(a) the language of the proceeding should be English.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French-language Complaint and Commencement Notification, and, absent a formal Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Blackstone TM L.L.C., provides various financial services. Complainant has rights in the BLACKSTONE mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 1,986,927, registered on July 16, 1996). Respondent’s <blackinvestonefunds.com> domain name is confusingly similar to the BLACKSTONE mark since it includes the whole mark. Respondent separates “black” and “stone” with a descriptive term and adds another descriptive term after the mark, both of which relate to Complainant’s services, as well as the generic top-level domain (“gTLD”) “.com”. Further, Respondent uses the Domain Name to impersonate Complainant.
Respondent lacks rights or legitimate interests in the <blackinvestonefunds.com> domain name since Respondent is not licensed or authorized to use Complainant’s BLACKSTONE mark and is not commonly known by the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate use. Rather, Respondent is impersonating Complainant to cause customer confusion.
Respondent registered and uses the <blackinvestonefunds.com> domain name in bad faith. Respondent is taking advantage of and capitalizing on the fame and goodwill of the BLACKSTONE mark. Respondent is also passing off as Complainant to confuse Internet users while it purports to offer competing services. Finally, Respondent had actual knowledge of Complainant’s rights in the BLACKSTONE mark as the website that the Domain Name resolves to makes numerous references to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BLACKSTONE mark. The Domain Name is confusingly similar to Complainant’s BLACKSTONE mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 asserts rights in the BLACKSTONE mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,986,927, registered on July 16, 1996). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <blackinvestonefunds.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark because it wholly incorporates both key elements of Complainant’s BLACKSTONE mark. The Domain Name also contains the descriptive term “funds”, the “.com” gTLD and the letters “inve” between the “black” and “stone” elements which create the word “invest”. The effect of the Domain Name is that a reader would see both elements of the BLACKSTONE mark along with the descriptive terms “invest” and “funds”. These changes are insufficient to distinguish the Domain Name from the BLACKSTONE mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
In support of the above conclusion on confusing similarity the Panel notes that section 1.15 of the WIPO Overview states that “In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BLACKSTONE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Odille Marthe Bonneville / Europa Finance Line” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website where Respondent purported to offer investment services and financial services in direct competition with Complainant under the BLACKSTONE mark. The use of a confusingly similar domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel’s finding that Respondent’s use of the Domain Name is not a bona fide offering of goods or services is further supported by the fact the website to which the Domain Name resolved displayed a logo identical to Complainant’s BLACKSTONE logo, displayed photos of Complainant’s offices, employees and officers, including providing details of Complainant’s CEO and COO and listed, as its business address, Complainant’s physical address in New York. These facts indicate that Respondent, in its use of the Domain Name, seeks to pass itself off as Complainant, which is not a bona fide offering of goods or services.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, January 9, 2023, Respondent had actual knowledge of Complainant’s BLACKSTONE mark, which has developed a considerable global reputation. The Respondent is offering services from the Domain Name that wholly incorporates both elements of the BLACKSTONE mark that are in direct competition to the Complainant’s services. Furthermore the website that the Domain Name resolved to made reference to Complainant’s physical address and officers, further indicating actual knowledge of Complainant and its BLACKSTONE mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to redirect Internet users to Respondent’s own website where Respondent purports to offer financial services in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also 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 finds Complainant has satisfied 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 <blackinvestonefunds.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: March 1, 2023
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