Blackstone TM L.L.C. v. BG Group / bg immigration
Claim Number: FA2307002054410
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, U.S. Respondent is BG Group / bg immigration (“Respondent”), Punjab, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bgblackstone.com>, registered with HOSTINGER, UAB.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Francine Tan as Panelist.
Complainant submitted a Complaint to Forum electronically on July 24, 2023; Forum received payment on July 24, 2023.
On July 25, 2023, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <bgblackstone.com> domain name is registered with HOSTINGER, UAB and that Respondent is the current registrant of the names. HOSTINGER, UAB has verified that Respondent is bound by the HOSTINGER, UAB 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 July 25, 2023, Forum notified Complainant of Respondent’s identity and contact information and directed Complainant to rectify the deficiencies within 5 calendar days. On the same day, Complainant submitted an Amended Complaint.
On July 25, 2023, Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@bgblackstone.com. Also on July 25, 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.
A timely Response was received and determined to be complete on August 14, 2023.
An Additional Submission was received and was determined to be complete on August 15, 2023.
On August 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Francine Siew Ling Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant and/or its related and affiliated entities, licensees and predecessors provide a wide variety of services in the financial industry, including financial advisory services and asset and investment management services, and have done so since 1985 under the BLACKSTONE name and trade mark.
Complainant is headquartered in New York City and has offices worldwide including in Mumbai, Singapore, London, Paris, Frankfurt, Tokyo, Seoul, Beijing and Hong Kong. It has hundreds of billions of dollars’ worth of assets under management and employs over 2,500 people worldwide.
Complainant has registered the BLACKSTONE mark and other variations incorporating the word BLACKSTONE (the “BLACKSTONE Marks”) in various countries around the world in relation to financial and related services. These registrations include the following:
a) U.S. Registration No. 1,986,927 for BLACKSTONE registered on July 16, 1996;
b) U.S. Registration No. 2,198,568 for THE BLACKSTONE GROUP registered on October 20, 1998;
c) U.S. Registration No. 2,374,887 for BLACKSTONE registered on August 8, 2000;
d) U.S. Registration No. 4146432 for BLACKSTONE ENTREPRENEURS NETWORK registered on May 22, 2012;
e) U.S. Registration No. 5,316,226 for BLACKSTONE LAUNCHPAD registered on October 24 2017;
f) U.S. Registration No. 6,359,897 for BLACKSTONE registered on May 25, 2021;
g) U.S. Registration No. 6,359,897 for BLACKSTONE registered on May 25 2021;
h) EU Registration No. 018256705 for BLACKSTONE registered on December 23, 2020;
i) EU Registration No. 000843086 for BLACKSTONE registered on November 16, 1999;
j) Irish Registration No. 138866 for BLACKSTONE registered on July 17, 1990;
k) UK Registration No. UK00003502211 for BLACKSTONE registered on June 18, 2020;
l) UK Registration No. UK00001432799 for BLACKSTONE registered on July 10, 1992; and
m) Indian Registration No 1362983 for BLACKSTONE, registered with effect from June 10, 2005.
Complainant has used its BLACKSTONE Marks for many years, undertaking direct marketing to consumers via its website at www.blackstone.com, and social media channels such as Twitter, YouTube, LinkedIn, Facebook and Instagram.
Respondent registered the disputed domain name on July 17, 2023, which is decades after Complainant had acquired widespread trademark rights in its BLACKSTONE Marks.
Complainant asserts that the disputed domain name incorporates its BLACKSTONE trade mark in its entirety and is virtually identical and confusingly similar thereto. The addition of the letters “bg” in the disputed domain name does not obviate the confusing similarity with Complainant’s BLACKSTONE trade mark.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since Respondent is not a licensee of Complainant. Prior to the time Complainant established rights in its BLACKSTONE Marks, Respondent did not actually engage in any legitimate business or commerce under the BLACKSTONE Marks or the disputed domain name. Respondent is not using the disputed domain name in connection with the bona fide offering of goods and services or for any legitimate business or purpose. The disputed domain name resolves to a website that purports to offer financial services including investment management services, under the company name and mark “BG BLACKSTONE”, which is confusingly similar to Complainant’s BLACKSTONE mark. The purported services offered by Respondent are closely related to Complainant’s investment management services. Respondent is not commonly known by the disputed domain name. Complainant’s BLACKSTONE Marks are so well known that the only plausible inference for Respondent’s registration of the disputed domain name is to take advantage and trade off the goodwill associated with Complainant’s BLACKSTONE Marks. Respondent must have been aware of Complainant’s BLACKSTONE Marks in view of Complainant’s long-standing use and fame.
Respondent is benefitting commercially from the registration of the disputed domain name, by attracting Internet traffic to its website. Internet users would be under the mistaken belief that the Respondent’s website belongs to or is associated with Complainant.
Complainant asserts that the disputed domain name was registered and is being used in bad faith. Respondent must have been aware of Complainant’s BLACKSTONE Marks in view of Complainant’s long-standing use and fame. Respondent’s use of the confusingly similar domain name in connection with Respondent’s website, which purports to offer financial services identical or closely related to those offered by Complainant, is evidence of bad faith registration and use. By causing initial interest confusion, Respondent’s use and registration of the disputed domain name disrupts the Complainant’s business, which is also evidence of bad faith registration and use.
B. Respondent
Respondent asserts that its use of the disputed domain name is legitimate and does not constitute bad faith, and that Complainant filed the Complaint in bad faith to harass Respondent.
Respondent states that the prefix “bg” in the disputed domain name stands for “Bhagwati Graphics”, and therefore the full name of the disputed domain name is “Bhagwati Graphics Blackstone” which is different from Complainant’s BLACKSTONE trade mark. Bhagwati Graphics is the name of a company owned by Respondent. The disputed domain name is therefore not identical or confusingly similar to Complainant’s BLACKSTONE mark.
Respondent asserts that its business is registered and has been operating under the name “Bhagwati Graphics” since 2008. It also owns other businesses with similar prefixes such as “BG Capital”.
Respondent further asserts that it has never mentioned on its website or advertisements that it is related to Complainant or has it tried to contact any client of Complainant. Respondent is not taking advantage of Complainant’s reputation or goodwill.
C. Additional Submissions
Complainant asserts that Respondent has failed to rebut Complainant’s prima facie case:
(i) There is nothing apparent on the face of the disputed domain name that indicates that “BG” refers to “Bhagwati Graphics” or that consumers would ascribe any association between “bg” and “Bhagwati Graphics” in the disputed domain name. This is especially so since the disputed domain name is not used in connection with the advertising services listed in Respondent’s corporate registration for “Bhagwati Graphics.” Instead, the disputed domain name resolves to a website using the name BG BLACKSTONE, where BLACKSTONE is the most dominant and prominent part of the mark, which website offers investment management services identical or nearly identical to those offered by Complainant under its own BLACKSTONE Marks.
(ii) The words “Bhagwati Graphics” do not appear anywhere on Respondent’s website. It is more likely that consumers will view the letters “bg” in the disputed domain name to be merely an acronym or initialism for descriptive or generic matter or view it as just mere gibberish. Even if consumers were to understand “bg” as a reference to “Bhagwati Graphics,” the addition of Respondent’s company name to a well-known mark similarly fails to obviate the confusing similarity between the disputed domain name and Complainant’s BLACKSTONE Marks.
(iii) Neither the disputed domain name nor Respondent’s website makes any reference to “Bhagwati Graphics” or to the provision of advertising services. Although Registrant obtained a corporate registration for BG BLACKSTONE in India in January 2023, this corporate registration does not give it rights to use the BLACKSTONE trade mark in connection with investment management services.
(iv) Respondent did not register the disputed domain name under the corporate name BG BLACKSTONE or any corporate name containing or comprising BLACKSTONE when registering the disputed domain name, instead registering the disputed domain name under the names “BG Group” and ‘BG Immigration”, “Blackstone” is not part of Respondent’s actual name, its original corporate name “Bhagwati Graphics”, or of the names listed in the registrant section of the WhoIs report. Respondent cannot claim legitimate rights in BLACKSTONE by obtaining a corporate registration for another company with a name containing BLACKSTONE nearly 20 years after Complainant established registered trademark rights in India in its BLACKSTONE mark, especially where Respondent did not register the disputed domain name in the name of any company whose name contains or comprises BLACKSTONE.
(v) Respondent’s argument that it has not actually referred to Complainant on his site is immaterial since impersonation is not needed to show lack of legitimate rights or bona fide use. Consumers very easily could believe that Respondent’s website is affiliated with or sponsored by Complainant and its well-known BLACKSTONE Marks. The use of the disputed domain name for a website offering services that are closely related to those services offered by Complainant is not a legitimate or bona fide use.
(vi) Respondent provides no explanation why it chose BLACKSTONE, one of the most famous names and trade marks in the investment services industry, as part of its new corporate name and the disputed domain name nearly 15 years after starting is other businesses, in connection with offering investment management services identical or nearly identical to those services offered by Complainant. The inference is that it was to create a false association with Complainant.
(vii) Respondent does not deny that the disputed domain name resolved to a website offering purported investment management services nearly identical to Complainant’s own services.
(a) The disputed domain name is confusingly similar to the trade mark BLACKSTONE in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used 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 and 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.
Complainant has established it has rights in the trade mark BLACKSTONE through registration of the mark with the USPTO and other trademark offices.
The only difference between the disputed domain name and Complainant’s mark lies in the addition of the letters “bg”, and the gTLD “.com.
The “.com” element is a technical requirement of domain names and does not remove the confusing similarity with Complainant’s BLACKSTONE mark.
The addition of the prefix “bg” in the disputed domain name does not remove the confusing similarity with Complainant’s trade mark for the purposes of Policy ¶ 4(a)(i). (See, e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016. See also ¶1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).)
Policy ¶ 4(a)(i) has therefore been established.
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), after which the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name which has not been successfully rebutted by Respondent.
The Panel does not agree that Respondent has demonstrated that it has rights or legitimate interests in the disputed domain name. Even if the Panel were to accept that the prefix “bg” stands for “Bhagwati Graphics”, there is no evidence that this significance of the letters “bg” is widely known and recognized by consumers to signify “Bhagwati Graphics”. Moreover, Respondent has been silent on why it selected the name “blackstone” for the domain name registration. Respondent has not proven that it had rights to use the BLACKSTONE trade mark when it registered the domain name. Its Indian company registration for “BG Black Stone Private Limited” in January 2023, in itself, does not give Respondent rights or legitimate interests in the disputed domain name which incorporates Complainant’s famous BLACKSTONE trade mark.
Respondent’s argument that the full name of the disputed domain name is “Bhagwati Graphics Blackstone” is clearly flawed. The domain name registered is <bgblackstone.com> and not <bhagwatiggraphicsblackstone.com>.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Policy ¶ 4(a)(ii) has therefore been established.
The Panel also finds that Complainant has established that the disputed domain name was registered and is being used in bad faith.
Respondent did not dispute that Complainant had rights in the BLACKSTONE mark at the point of registering the disputed domain name. The disputed domain name is used for the Respondent’s website which offers financial services, which are essentially identical to services Complainant offers under its BLACKSTONE trade mark. Respondent did not dispute these assertions made by Complainant.
Respondent’s primary area of business appears to be advertising, as it so claims and as is reflected on the registration certificate for Bhagwati Graphics. However, Respondent’s website does not reflect the use of the disputed domain name for advertising services. The Respondent’s webpage states that “BG Blackstone” is a “leading investment firm” with “over 25 years of experience in the industry”. No evidence has been proffered by Respondent to substantiate this claim. In fact, the Indian Certificate of Incorporation shows that “BG Black Stone Private Limited” was incorporated only in January 2023.
In any event, even if one were to accept the Respondent’s claim that it has over 25 years of experience in the industry, the logical and reasonable expectation from this is that all the more, Respondent should have been well aware of Complainant and its BLACKSTONE trade mark, and of its reputation in the financial services industry. The proper inference to be made is therefore that Respondent registered the disputed domain name and set up the website in order to ride on Complainant’s significant goodwill and reputation, in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's BLACKSTONE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Panels in earlier UDRP cases have consistently found that the mere registration of a domain name that is confusingly similar to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see ¶3.1.4 of the WIPO Overview 3.0). To summarize, the factors which the Panel has taken into account in this case include:
(i) the nature of the domain name (in this case, incorporating Complainant’s widely-known mark);
(ii) the content of the Respondent’s website to which the disputed domain name directs;
(iii) a clear absence of rights or legitimate interests coupled with no credible explanation for Respondent’s choice of the domain name.
(See ¶3.2.1 of the WIPO Overview 3.0.)
Policy ¶ 4(a)(iii) has therefore been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bgblackstone.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Tan, Panelist
Dated: August 21, 2023
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