DECISION

 

Blackstone TM L.L.C. v. Brian Tailor

Claim Number: FA2309002060901

PARTIES

Complainant is Blackstone TM L.L.C. ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Brian Tailor ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <blackstonetrades.net>, registered with NameCheap, Inc..

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 8, 2023; Forum received payment on September 8, 2023.

 

On September 8, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <blackstonetrades.net> 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 September 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@blackstonetrades.net. Also on September 11, 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 October 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Blackstone TM L.L.C., is a financial services company focusing on asset management including investment vehicles.

 

Complainant asserts rights to the BLACKSTONE mark based upon registration with the United States Patent and Trademark Office ("USPTO") as well as other trademark registrars worldwide.

 

Respondent's <blackstonetrades.net> domain name is confusingly similar to Complainant's mark as it contains the BLACKSTONE mark in its entirety merely adding the generic term "trades" and the generic top-level domain ("gTLD") ".net" to form the at-issue domain name.

 

Respondent does not have rights or legitimate interests in the <blackstonetrades.net> domain name. Respondent is not licensed or authorized to use Complainant's BLACKSTONE mark and is not commonly known by the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to purport to offer competing financial services. The services offered by Respondent are likely fake.

 

Respondent registered and uses the <blackstonetrades.net> domain name in bad faith. Respondent registered and uses the domain name to offer likely fake competing financial services. Furthermore, Respondent registered and uses the at-issue domain name to create initial interest confusion. Additionally, Respondent registered and uses the at-issue domain name with constructive and/or actual knowledge of Complainant's rights in the BLACKSTONE mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the BLACKSTONE trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at-issue domain name after Complainant acquired rights in the BLACKSTONE trademark.

 

Respondent uses the at-issue domain name to address a website offering (likely fake) financial services similar to the services offered by Complainant under its BLACKSTONE mark.

 

DISCUSSION

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.

 

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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has a USPTO registration for its BLACKSTONE trademark. Such registration, as well as any of Complainant's registrations with other trademark agencies worldwide, is sufficient to demonstrate Complainant's rights in the BLACKSTONE mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) ("Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world."); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) ("The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.").

 

Respondent's <blackstonetrades.net> domain name contains Complainant's BLACKSTONE trademark followed by the generic term "trades" with all followed by the ".net" top-level domain name. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish the <blackstonetrades.net> domain name from Complainant's BLACKSTONE trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that <blackstonetrades.net> is confusingly similar to Complainant's BLACKSTONE trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

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. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <blackstonetrades.net> identifies the domain name's registrant is "Brian Tailor" and the record before the Panel contains no evidence showing that Respondent is commonly known by the <blackstonetrades.net> domain name. The Panel therefore concludes that Respondent is not commonly known by <blackstonetrades.net> for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).

 

Respondent uses <blackstonetrades.net> to address a website that purports to offer financial services under the company name and mark "BLACKSTONE TRADES" that are identical or closely related to Complainant's own investment services. However, Respondent's offering of such services appears to be a sham. Respondent's use of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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."); see also, 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.").

 

Registration and Use in Bad Faith

As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Respondent uses the confusingly similar <blackstonetrades.net> domain name to address a website that purports to offer services in competition with Complainant's offering. The offering by Respondent is likely a sham. Using the confusingly similar <blackstonetrades.net> domain name in such manner is disruptive to Complainant's business and falsely indicates that there is some relationship between Complainant and Respondent. Respondent's use of the domain name demonstrates Respondent's bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent's use of the disputed domain name to offer competing loan services disrupts Complainant's business under Policy ¶ 4(b)(iii)); see also, Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int'l Inc., FA 1191541 (Forum July 2, 2008) (website offering fake educational services was not a legitimate use of domain name). 

 

Moreover, Respondent had actual knowledge of Complainant's rights in the BLACKSTONE mark when it registered <blackstonetrades.net> as a domain name. Respondent's actual knowledge of Complainant's trademark is evidenced from the worldwide notoriety of Complainant's BLACKSTONE trademark and from Respondent's use of the domain name to purportedly offer services that appear to compete with Complainant's services. Respondent's registration and use of <blackstonetrades.net> with knowledge of Complainant's rights in BLACKSTONE further shows Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <blackstonetrades.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: October 4, 2023