DECISION

 

Blackstone TM L.L.C. v. Indasia Nelson

Claim Number: FA2402002084916

 

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 Indasia Nelson ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blackstoneprops.com> ("Domain Name"), registered with Tucows Domains Inc.

 

PANEL

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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 21, 2024; Forum received payment on February 21, 2024.

 

On February 22, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <blackstoneprops.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2024 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@blackstoneprops.com. Also on February 22, 2024, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 14, 2024, 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Blackstone TM L.L.C., provides a wide variety of services in the finance industry.  Complainant has rights in the BLACKSTONE mark based on registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,986,927, registered Jul. 16, 1996).  Respondent's <blackstoneprops.com> domain name is confusingly similar to Complainant's mark since it incorporates Complainant's mark in its entirety, adding only the descriptive term "props" and the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights or legitimate interest in the <blackstoneprops.com> domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the BLACKSTONE mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as the Domain Name redirects to Complainant's website at www.blackstone.com.

 

Respondent registered and uses the <blackstoneprops.com> domain name in bad faith. Respondent had actual knowledge of Complainant's rights to the BLACKSTONE mark prior to registering the Domain Name as evidenced by redirecting the Domain Name to Complainant's website. Additionally, by redirecting the Domain Name to Complainant's website, the Respondent is exhibiting bad faith because the Domain Name may be exploited by Respondent at a later time.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.  On February 23, 2024, Respondent sent an e-mail to Forum denying any ownership of the Domain Name. The Panel notes that Tucows Domains Inc. has confirmed that Respondent is the registrant of the Domain Name and thus remains the proper party to the proceeding.

 

FINDINGS

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 use of the Domain Name and that Respondent registered and has used of the Domain Name in bad faith.

 

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

Complainant has rights in the BLACKSTONE mark based on registration with the USPTO (e.g Reg. No. 1,986,927, registered Jul. 16, 1996).  Registration of a mark with the USPTO sufficiently confers a complainant's rights in a mark for the purposes of Policy ¶ 4(a)(i).  See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO").").

 

The Panel finds that the <blackstoneprops.com> domain name is confusingly similar to the BLACKSTONE mark as it adds the descriptive term "props" (in finance a common abbreviation for "proprietary", a form of trading) and the ".com" gTLD to Complainant's wholly incorporated BLACKSTONE mark.  The addition of generic or descriptive terms and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i).  See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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, FA 1613011 (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, FA 1621573 (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 "Indasia Nelson" 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 Complainant's official website at www.blackstone.com. In circumstances where Respondent has provided no explanation for the use of the Domain Name, or any other evidence establishing any rights to the Domain Name, the use of the Domain Name to redirect to the Complainant's website, potentially to pass itself off as Complainant or as part of some other scheme to establish trust in the Domain Name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Google LLC v. Tim Sales, FA 1363660 (Forum Jan. 31, 2018) ("[T]he Panel finds that Respondent is using the <googlesalessupport.com> domain name to redirect Internet users to Complainant's website and finds that Respondent lacks rights and legitimate interests in the domain name.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, January 26, 2024, Respondent had actual knowledge of the Complainant and its BLACKSTONE mark as the Domain Name resolved to Complainant's website at www.blackstone.com. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent registered and uses the Domain Name in bad faith by attempting to pass itself off as Complainant for Respondent's commercial gain. In the absence of any alternative reasonable explanation and on the balance of probability, the Panel considers that the most likely explanation for Respondent's actions is that the Domain Name was registered as part of a scheme to trade off the goodwill of Complainant's BLACKSTONE mark for Respondent's commercial gain, such as a later redirection to a website designed to take advantage of any confusion between the Complainant and the Respondent. The use of the Domain Name prior to the commencement of the proceeding is simply part of that scheme (to pretend that Respondent is connected to Complainant). This amounts to bad faith under 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)."); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant's own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").  

 

 The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <blackstoneprops.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 14, 2024