Blackstone TM L.L.C. v. Rodrigo Cremer
Claim Number: FA2109001967026
Complainant is Blackstone TM L.L.C. ("Complainant"), United States, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C, New York, USA. Respondent is Rodrigo Cremer ("Respondent"), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <breit.cash>, <breit.fund>, <breit.finance>, and <breit.capital>, registered with NameCheap, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2021; the Forum received payment on September 30, 2021.
On September 30, 2021, NameCheap, Inc. confirmed by email to the Forum that the <breit.cash>, <breit.fund>, <breit.finance>, and <breit.capital> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 October 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@breit.cash, postmaster@breit.fund, postmaster@breit.finance, postmaster@breit.capital. Also on October 4, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 October 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the trademark holding and licensing company for Blackstone Inc., a financial services company that employs more than 2,500 people worldwide and has hundreds of billions of dollars in assets under management. In 2015 Complainant's licensee formed Blackstone Real Estate Income Trust, Inc., which offers asset and investment management services under the mark BREIT pursuant to a license from Complainant. These services have been extensively advertised and promoted under the BREIT mark, with an annual marketing budget of more than $1 million; approximately 112,000 investors in the United States currently own BREIT shares. Complainant owns trademark registrations for BREIT in Benelux, Hong Kong, and United Kingdom (all issued in 2020), and has applications pending in the United States and Brazil. Complainant's Brazil application was published for opposition on September 14, 2021. Complainant also asserts common law rights in the BREIT mark.
Respondent registered the disputed domain names <breit.cash>, <breit.fund>, <breit.finance>, and <breit.capital> via a privacy registration service on September 20, 2021. The domain names resolve to parked websites containing pay-per-click links to sites offering competing or related financial services. Complainant states that Respondent is not commonly known by the disputed domain names, is not a licensee of Complainant, is not authorized to use its mark, and has no relationship whatsoever to Complainant.
Complainant contends on the above grounds that each of the disputed domain names <breit.cash>, <breit.fund>, <breit.finance>, and <breit.capital> is identical or confusingly similar to its BREIT mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are 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 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <breit.cash>, <breit.fund>, <breit.finance>, and <breit.capital> corresponds to Complainant's registered BREIT trademark, adding only a generic top-level domain. The addition of a top-level domain is normally irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Klarna Bank AB v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo, D2021-1587 (WIPO June 28, 2021) (finding <klarna.finance> identical to KLARNA); HDR Global Trading Ltd. v. Super Privacy Service LTD c/o Dynadot, FA 1849606 (Forum July 29, 2019) (finding <bitmex.capital> identical to BITMEX); Intercontinental Exchange Holdings, Inc. v. Lord Oxford, FA 1812100 (Forum Nov. 21, 2018) (finding <theice.cash> and <theice.fund> identical or confusingly similar to THE ICE). The Panel therefore considers each of the disputed domain names to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
Each of the disputed domain names incorporates Complainant's registered mark without authorization. The domain names are being used for the sole apparent purpose of displaying pay-per-click links to services that compete with or are related to those offered by Complainant's licensee. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Oracle International Corp. v. Jun Yin, FA 1961475 (Forum Oct. 8, 2021) (finding lack of rights or interests in similar circumstances); Klarna Bank AB v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets forth circumstances that serve as evidence of registration and use in bad faith. Under paragraph 4(b)(i) of the Policy, for example, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register four domain names corresponding to Complainant's registered mark without authorization, and is using the domain names for the sole apparent purpose of displaying pay-per-click links to services that compete with or are related to those offered by Complainant's licensee. Respondent has failed to provide any explanation for the selection of the disputed domain names, and has declined to participate in this proceeding. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain names intending to use them in a manner calculated to create and exploit confusion with Complainant's mark, most likely either by selling the domain names or by using them to attract Internet users seeking Complainant, and that Respondent is maintaining the domain names for that purpose. See, e.g., Vanguard Trademark Holdings USA LLC v. Lloyd Ecker, FA 1953317 (Forum July 29, 2021) (inferring bad faith where domain name resolved to parked page composed of pay-per-click links, absent explanation from respondent); Genpak LLC v. DING YUFAN, FA 1939920 (Forum May 10, 2021) (inferring bad faith absent active use of domain name); Design Ideas, Ltd. v. Chen Jun Cai, FA 1940100 (Forum May 4, 2021) (inferring bad faith where domain name was used to redirect users to unrelated websites).
The Panel also notes that the disputed domain names were registered by an individual apparently located in Brazil six days after the trademark application that Complainant filed in Brazil was published for opposition. The suspicious timing of Respondent's registration of the domain names lends further support to the Panel's inference of bad faith. See, e.g., Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA 1613780 (Forum May 28, 2015) (finding opportunistic bad faith where domain name was registered shortly after corresponding trademark application became public).
The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <breit.cash>, <breit.fund>, <breit.finance>, and <breit.capital> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 8, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page