Blackstone TM L.L.C. v. Blackstone Spa
Claim Number: FA2305002043350
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Blackstone Spa (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonereal-estate.com>, registered with Register SpA.
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 May 5, 2023; Forum received payment on May 5, 2023.
On May 8, 2023, Register SpA confirmed by e-mail to Forum that the <blackstonereal-estate.com> domain name is registered with Register SpA and that Respondent is the current registrant of the name. Register SpA has verified that Respondent is bound by the Register SpA 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 May 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@blackstonereal-estate.com. Also on May 9, 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 May 31, 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 has registered the BLACKSTONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,986,927, registered July 16, 1996). See Compl. Ex. 2. Respondent’s <blackstonereal-estate.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark before adding the generic or descriptive term “real-estate” and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <blackstonereal-estate.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent redirects users visiting the disputed domain name to Complainant’s own website.
Respondent registered and uses the <blackstonereal-estate.com> domain name in bad faith. Respondent passes off as Complainant by redirecting users visiting the disputed domain name to Complainant’s own website. Respondent had actual knowledge of Complainant’s rights in the BLACKSTONE mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of a wide variety of services in the financial industry, including asset and investment management services.
2. Complainant has established its rights in the BLACKSTONE mark based upon registration with the USPTO (e.g. Reg. No. 1,986,927, registered July 16, 1996).
3. Respondent registered the <blackstonereal-estate.com> domain name on April 23, 2023.
4. Respondent has caused the disputed domain name to redirect users visiting the disputed domain name to Complainant’s own website.
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 based upon its registration of the mark with the USPTO (e.g. Reg. No. 1,986,927, registered July 16, 1996). See Compl. Ex. 2. Registration of a mark with the USPTO sufficiently establishes a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established its rights in the BLACKSTONE mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLACKSTONE mark. Complainant argues that Respondent’s <blackstonereal-estate.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark before adding the generic or descriptive term “real-estate” and the “.com” gTLD. Similar changes in a registered mark have failed to distinguish sufficiently a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). As Complainant rightly submits:
“… Complainant offers real estate investment services and is the largest owner of commercial real estate globally, so “real-estate” is a term consumers would expect to be associated with Complainant, thus only increasing the confusing similarity.”.
The Panel therefore finds that the <blackstonereal-estate.com> domain name is confusingly similar to the BLACKSTONE mark under 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)).
(a) Respondent has chosen to take Complainant’s BLACKSTONE mark and to use it in its domain name, adding the generic or descriptive term “real-estate” which does not negate the confusing similarity between the domain name and the trademark;
(b)Respondent registered the <blackstonereal-estate.com> domain name on April 23, 2023;
(c) Respondent has caused the disputed domain name to redirect users visiting the disputed domain name to Complainant’s own website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <blackstonereal-estate.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “Blackstone Spa” as the registrant of the domain name. See WHOIS Information of Record. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the BLACKSTONE mark. Panels may use these facts as evidence of lacking rights or legitimate interests. 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). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <blackstonereal-estate.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent uses the disputed domain name to resolve to Complainant’s own website. Use of a disputed domain name to imply a connection between a complainant and a respondent by resolving to a complainant’s own website does not represent a bona fide offer of goods and services or a noncommercial or otherwise fair use per Policy 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Complainant provides screenshot evidence of the resolving website for the disputed domain name. See Compl. Ex. 5. As the Panel agrees, it finds that Respondent lacks rights and legitimate interests in the disputed domain name in accordance with Policy 4(a)(ii).
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 submits that Respondent uses the disputed domain name to resolve to Complainant’s own website. Use of a disputed domain name to imply a connection between a complainant and a respondent by resolving to a complainant’s own website does not represent a bona fide offer of goods and services or a noncommercial or otherwise fair use per Policy 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant provides screenshot evidence of the resolving website for the disputed domain name. See Compl. Ex. 5. As the Panel agrees, it finds that Respondent has used the disputed domain name in bad faith within the terms of Policy 4(a)(iii).
Secondly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s rights in the BLACKSTONE mark prior to registration of the disputed domain name. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name. However, actual knowledge 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.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the BLACKSTONE mark prior to registration of the disputed domain name based upon the fame of the mark and Respondent’ use of the disputed domain name to redirect users to Complainant’s own website. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <blackstonereal-estate.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: June 1, 2023
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