DECISION

 

Blackstone TM L.L.C. v. KTY

Claim Number: FA2412002128693

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 KTY ("Respondent"), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blackstonets.com>, registered with Dominet (HK) Limited.

 

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 December 9, 2024; Forum received payment on December 9, 2024.

 

On December 9, 2024, Dominet (HK) Limited confirmed by e-mail to Forum that the <blackstonets.com> domain name is registered with Dominet (HK) Limited and that Respondent is the current registrant of the name. Dominet (HK) Limited has verified that Respondent is bound by the Dominet (HK) Limited 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 December 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@blackstonets.com. Also on December 10, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On December 31, 2024, 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 <blackstonets.com> domain name is confusingly similar to Complainant's mark as it contains the BLACKSTONE mark in its entirety merely adding the letters "ts" and the generic top-level domain ("gTLD") ".com" to form the at-issue domain name.

 

Respondent does not have rights or legitimate interests in the <blackstonets.com> 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's domain name incorporates Complainant's trademark in full, resolves to a login page for another website that prominently reads (translated from Japanese): "safe and reliable trading experience Your transaction data is encrypted and your funds are safely managed." Respondent's site also has pages in Chinese that ostensibly offer purported trading and investment services that are closely related to the services offered by Complainant, in an effort to make consumers believe that Respondent's site is somehow affiliated with Complainant. Additionally, the website presents a login page where users are asked to insert personal and confidential account information, ostensibly in an attempt to phish for personal or confidential information of Complainant's clients. Such "phishing" for personal and confidential information is not a legitimate purpose or bona fide offering of goods and services under the Policy. Even in the absence of impersonation or phishing, the use of a disputed domain name in connection with a website offering purported financial services that are closely related to those services offered by Complainant under a domain that is confusingly similar to Complainant's mark is not a legitimate or bona fide use of a domain name. Such use of the disputed domain name also causes "initial interest confusion," which is disruptive to Blackstone, its business, and goodwill in the BLACKSTONE trademarks.

 

Respondent registered and uses the <blackstonets.com> domain name in bad faith. Respondent was aware of Blackstone's BLACKSTONE marks when he or she chose and registered the disputed domain name, and in fact chose the domain name because it was confusingly similar to Blackstone's well-known marks and intended to capitalize on that confusion to attract Internet users to the resolving website for similar services. This alone sufficiently constitutes evidence of bad faith of a registration of a domain. Complainant's marks are so well-known that Respondent would be hard-pressed to provide any legitimate explanation for registering the disputed domain name other than to take advantage of the goodwill and brand recognition associated with Blackstone and its famous BLACKSTONE marks. By ostensibly using the disputed domain name to impersonate Complainant in connection with phishing, Respondent seeks to falsely suggest that it is somehow endorsed by or affiliated with Complainant. Such false association, passing off and phishing in violation of Complainant's intellectual property rights is further evidence of bad faith use and registration. Even in the absence of impersonation or phishing, the use of a disputed domain name in connection with a website offering purported financial services that are closely related to those services offered by Complainant under a domain that is confusingly similar to Complainant's marks is not a legitimate or bona fide use of a domain name. Even in the absence of impersonation or phishing, Respondent's use of the confusingly similar domain name in connection with Respondent's resolving website, a website which purports to offer financial trading and investment services closely related to those that have been long offered by Blackstone under domains that are identical to Complainant's marks, is also evidence of bad faith use and registration. Such use of the at-issue domain name also causes "initial interest confusion," which is disruptive to Blackstone, its business, and goodwill in the BLACKSTONE trademarks. Respondent is presumed to have had constructive knowledge of Complainant's trademarks when it registered the confusingly similar at-issue domain name.

 

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 pretending to be sponsored by Complainant and purportedly offering competing services that may be used for phishing.

 

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 USPTO and other registrations for its BLACKSTONE trademark. Any of Complainant's BLACKSTONE trademark registrations 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 <blackstonets.com> domain name contains Complainant's BLACKSTONE trademark followed by the letters "ts" with all followed by the ".com" top-level domain name. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish the <blackstonets.com> domain name from Complainant's BLACKSTONE trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that <blackstonets.com> 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 <blackstonets.com> ultimately identifies the domain name's registrant as "KTY" and the record before the Panel contains no evidence showing that Respondent is commonly known by the <blackstonets.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <blackstonets.com> 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 <blackstonets.com> to address a website that pretends to be affiliated with Complainant and which may be used to phish for private information. Respondent's use the 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 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.").

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in respect of <blackstonets.com>.

 

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 <blackstonets.com> domain name to address a website that pretends to be sponsored by or affiliated with Complainant. The website is used to help facilitate Respondent in passing itself off as Complainant to deceive internet users into falsely believing that the <blackstonets.com> domain name, and its referenced website, are affiliated with Complainant. Respondent's use of <blackstonets.com> is disruptive to Complainant's business and designed to attract internet users so that Respondent may capitalize on the confusion Respondent created between its <blackstonets.com> domain name and Complainant's BLACKSTONE trademark. Respondent's use of the <blackstonets.com> domain name demonstrates Respondent's bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting).

 

Additionally, Complainant shows evidence indicating that Respondent may be using the at-issue domain name to facilitate the collection of private data from third parties through a login page featured on <blackstonets.com>'s directed website. Respondent's apparent intent to phish for personal information via <blackstonets.com> further demonstrates Respondent's bad faith under the Policy. See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant's login page in an attempt to gain Internet users' personal and financial information).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the BLACKSTONE mark when it registered <blackstonets.com> as a domain name. Respondent's prior knowledge is evidenced from the worldwide notoriety of Complainant's BLACKSTONE trademark and from Respondent's use of the domain name to direct internet users to a website that appears as if it is sponsored by Complainant. Respondent's registration and use of <blackstonets.com> with knowledge of Complainant's rights in BLACKSTONE further shows Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, 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 <blackstonets.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: January 1, 2025