Blackstone TM L.L.C. v. Sergei Hromichkov
Claim Number: FA2005001895177
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Sergei Hromichkov (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackrepresentstone.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2020; the Forum received payment on May 6, 2020.
On May 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <blackrepresentstone.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2020 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@blackrepresentstone.com. Also on May 8, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 relies on its claimed rights in the BLACKSTONE service mark acquired to its ownership of the service mark registrations described below and its use of the BLACKSTONE mark in its financial services business which it claims to have billions of dollars of assets under management, headquartered in New York City and also has offices worldwide, including in Baltimore, Houston, Los Angeles, San Francisco, Toronto, London, Paris, Frankfurt, Mumbai, Dubai, Singapore, Seoul, Shanghai, Sydney, Tokyo, Hong Kong, Beijing, Dublin, Dusseldorf, Luxembourg, Mexico City and Sao Paulo, employing over 2,500 people worldwide.
Complainant alleges that the disputed domain name is confusingly similar to its BLACKSTONE service mark, submitting that the disputed domain name features Complainant’s BLACKSTONE mark in its entirety and merely adds the descriptive term “represent” between “black” and “stone” – in the middle of a natural separation of the mark. Complainant argues that the addition of the descriptive term does nothing to distinguish Respondent’s domain name from Complainant’s BLACKSTONE mark. See, e.g., Blackstone TM L.L.C. v. Ernesto Vargas /consumer-legal-centers.com, FA 1541372 (Forum Feb. 27, 2014) (BLACKSTONE-LAWYERS.COM confusingly similar to complainant’s BLACKSTONE mark).
Moreover, as alleged below, Respondent is using the disputed domain name to resolve to a website impersonating Complainant and targeting its marks. This further supports a finding of confusing similarity. See Research In Motion Limited v. Georges Elias, D2009-0218 (WIPO Apr. 27, 2009) (confusing similarity where “[t]he Panel is in little doubt in this case that the Respondent intended to target the Complainant's marks”).
Complainant further alleges that Respondent is engaged in a pattern of registering its BLACKSTONE mark and has brought complaints under the Policy against Respondent in respect of a number of registrations viz. Forum cases FA 1891874 (myblackstones.com); FA 1890675 (blackstonerussiaonline.com; blackstone-web.com); FA 1889989 (blackstonerussia.com); FA 1888748 (blackstonereprestent.com), 1888646 (blackstoneswebs.com), FA 1888648 (blackstonesweb.com), FA 1893401 (representblackstone.com; russianrepresentationblackstone.com); and FA 1861321 (blackstonegroups.com). Complainant states that five of these disputes were decided in favor of Complainant. The remaining three disputes are pending.
Complainant argues that the addition of the gTLD <.com> is irrelevant in distinguishing the disputed domain name from Complainant’s BLACKSTONE mark. See Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) (finding addition of gTLD “.com” irrelevant for purposes of distinguishing disputed domain name from established mark because every domain must contain top level domain name).
Complainant further alleges that Respondent has no right or legitimate interests in the disputed domain arguing that Respondent is not commonly known by either its BLACKSTONE mark or the disputed domain name. See SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY’S name).
Complainant asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the BLACKSTONE mark or the disputed domain name and furthermore asserts that Respondent has no relationship whatsoever with Complainant.
Additionally, Complainant refers to a printout of the website to which the disputed domain name resolves that is exhibited as an annex to the Complaint, which illustrates that Respondents website that purports to be that of Complainant. It has copied significant content from Complainant’s recent legitimate website and contains links to Complainant’s legitimate website as well as Complainant’s marks and logos. Complainant submits that such use of the disputed domain name to impersonate Complainant and cause consumer confusion is not a legitimate purpose or bona fide offering of goods and services under the Policy. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”).
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing that it is clearly more than a coincidence that Respondent chose and registered a domain name that is confusingly similar to Complainant’s BLACKSTONE mark; that Complainant has a long and well established reputation in the use of the BLACKSTONE mark for its financial and asset management services, and that there can be no doubt that Respondent was aware of Complainant’s BLACKSTONE mark when he chose and registered the disputed domain name.
Complainant argues that the disputed domain name was in fact chosen because it is confusingly similar to Complainant’s well-known mark and intended to capitalize on that confusion to attract Internet users to the resolving website for similar services. Complainant submits that this alone constitutes evidence of bad faith of an registration of a domain. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Forum Feb. 22, 2010) (bad faith demonstrated by confusing use of famous DISNEY mark in domain names DISENY.COM and DSINEY.COM).
Complainant submits that Respondent is using the disputed domain name to impersonate Complainant in connection with phishing; that Respondent seeks to falsely to suggest that its website is somehow endorsed by or affiliated with Complainant. Complainant alleges that such false association, passing off and phishing in violation of Complainant’s intellectual property rights is further evidence of bad faith use and registration. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that disputed domain name was registered and used in bad faith where respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant further asserts that, as described above, Respondent has registered numerous domain names confusingly similar to Complainant’s mark, all resolving to the same or similar impersonation site. Five prior panels have found Respondent acted in bad faith and argues that this prior history of UDRP violations supports a finding of bad faith here.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is engaged in financial services and uses the BLACKSTONE service mark in association with its asset management businesses. Complainant is the owner of a portfolio of service mark registrations including:
· United States service mark BLACKSTONE, registration number 1,986,927, registered on July 16, 1996 on the Principal Register for services in international class 36;
· United States service mark THE BLACKSTONE GROUP, registration number 2,198,568 registered on October 20, 1998 on the Principal Register for services in international class 36;
· United States service mark BLACKSTONE, registration number 2,374,887, registered on August 8, 2000 on the Principal Register for services in international class 36;
· United States service mark BLACKSTONE ENTREPRENEURS NETWORK, registration number 4,146,432, registered on May 22, 2012 on the Principal Register for services in international class 35;
· United States service mark BLACKSTONE LAUNCHPAD, registration number 5,316,226, registered on October 24, 2017 on the Principal Register for services in international class 41.
Complainant has an established Internet presence with its principal website at <www.blacksotone.com>.
The disputed domain name was registered on April 27, 2020 and resolves to a website in the English and Russian languages that is almost identical to Complainant’s official website. Its presentation has an identical look and feel, and color scheme as Complainant’s website. Its content includes extensive use of the BLACKSTONE name and an image that is identical to the cityscape that is the dominant banner background.
There is no information available about Respondent except for that which has been provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name.
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”).
Complainant has adduced clear and convincing evidence that it has rights in the BLACKSTONE service mark acquired to its ownership of the service mark registrations described below and its use of the BLACKSTONE mark in its financial services business.
The disputed domain name consists of the elements being the words “black”, ”represent “and “stone“ followed by the generic Top Level Domain( gTLD) <.com> extension.
The generally accepted approach to be adopted by a Panelist when approaching the issue of confusing similarity is expressed in the WIPO Jurisprudential Overview 3.0 in the following terms:
“this test [for identity or confusing similarity under the first element of the Policy] typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) …
In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity…
Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.
In this context, panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant”
Respondent has failed to respond to this Complaint; however it could be argued that Complainant’s mark may not be the first thing that comes to mind of a member of the general public on first sight of the disputed domain name.
While the disputed domain name <blackrepresentstone.com> contains Complainant’s mark in its entirety, the two elements of the mark “black” and “stone“ are non-contiguous in the disputed domain name, and are separated by the word ”represent“. Additionally, the words “black” and “stone” on their own are non-distinctive commonplace words.
However, this Panel finds below that the disputed domain name does intentionally include both elements of Complainant’s mark albeit not contiguous.
On the balance of probabilities this panel finds that Complainant’s mark will be recognizable in the disputed domain name by search engine algorithms and in such circumstances this Panel finds, applying the above principles, that the disputed domain name is confusingly similar to the BLACKSTON mark in which Complainant has rights.
The use to which the disputed domain name is being put, to impersonate Complainant, is supportive of this finding.
For completeness it should be added that in the context of the present Complaint the gTLD <.com> extension may be ignored as it would be perceived as merely a technical necessity for a domain name and serves no other purpose or meaning.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no right or legitimate interest in the disputed domain name arguing that Respondent is not commonly known by either its BLACKSTONE mark or the disputed domain name; that Respondent never been authorized by Complainant to register or use the BLACKSTONE mark or the disputed domain name; that Respondent has no relationship whatsoever wit Complainant and that the printout of the website to which the disputed domain name resolves that is exhibited as an annex to the Complaint, illustrates that Respondent is using its website to impersonate Complainant is copied significant content from Complainant’s recent legitimate website and included links to Complainant’s legitimate website, using Complainant’s marks and logos. Complainant adds that such use of the disputed domain name to impersonate Complainant and cause consumer confusion is not a legitimate purpose or bona fide offering of goods and services under the Policy.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has a substantial business with a large international footprint. Respondent has registered several domain names that have been found to have been registered and used in bad faith. The look and feel of website to which the, recently created, disputed domain name resolves is almost identical to Complainant’s official website.
In such circumstances this Panel must find that on the balance of probability the registrant of the disputed domain name was aware of Complainant’s BLACKSTONE mark when he chose and registered the disputed domain name in bad faith and in fact registered the disputed domain name to target Complainant, its reputation, goodwill and Internet traffic intended for Complainant’s website.
Respondent is using the disputed domain name to resolve to a website, which is intentionally confusingly similar in content to Complainant’s official website, in order to impersonate Complainant and to falsely suggest that Respondent’s website it is somehow endorsed by or affiliated with Complainant. While Complainant had alleged, but provided no evidence of phishing by Respondent, the act of impersonation is sufficient to allow this Panel to find that on the balance of probabilities the disputed domain name is being used bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackrepresentstone.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 3, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page