Blackstone TM L.L.C. v. Jonh Green
Claim Number: FA2110001967807
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Jonh Green (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstoneaif.com>, registered with Eranet International Limited.
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 October 5, 2021; the Forum received payment on October 5, 2021.
On October 12, 2021, Eranet International Limited confirmed by e-mail to the Forum that the <blackstoneaif.com> domain name is registered with Eranet International Limited and that Respondent is the current registrant of the name. Eranet International Limited has verified that Respondent is bound by the Eranet International 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 October 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2021 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@blackstoneaif.com. Also on October 14, 2021, 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 November 9, 2021, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BLACKSTONE trademark and service mark established through its ownership of its portfolio of registrations described below and its extensive use of the mark in its financial services business since it was founded in 1985.
Complainant asserts that it has since grown into a global enterprise with hundreds of billions of dollars’ worth of assets under management, headquartered in New York City, with 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 submits that the disputed domain name, which incorporates Complainant’s BLACKSTONE mark in its entirety, is virtually identical or confusingly similar to Complainant’s registered BLACKSTONE mark. See Global Esprit Inc. v. Living 4, D2004-0318 (WIPO Aug. 24, 2004) (confusion found in domain name that incorporated complainant’s mark in full).
Complainant argues that the addition of the descriptive term “aif”, which is an abbreviation of the phrase “Alternative Investment Funds” does not obviate the confusing similarity. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding . . . descriptive terms . . . is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i)”).
Complainant further contends that the addition of the generic Top-Level Domain (“gTLD”) <.com> extension in the disputed domain name 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 alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that upon information and belief, prior to the time Complainant established rights in its BLACKSTONE mark, Respondent did not actually engage in any legitimate business or commerce under the Complainant’s mark or the disputed domain name.
Furthermore Complainant asserts that Respondent was not commonly known by either of those names. 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. Complainant adds that Respondent has no relationship whatsoever with Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent was not a licensee of complainant).
Complainant further contends that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate business or purpose.
Referring to a screen capture of the website to which the disputed domain name resolves , Complainant complains that Respondent is using the disputed domain name and Complainant’s BLACKSTONE mark, in connection with financial services, including alternative asset investment service, which are identical to those offered by Complainant. Complainant contends that such use of the disputed domain name is neither legitimate nor bona fide. See FC Online Marketing, Inc. v. Brett Ray, FA 1643100 (Forum Nov. 19, 2015) (use of confusingly similar domain name “to market, for commercial gain, services similar to those of Complainant,” was not bona fide or legitimate use).
Moreover, Complainant contends that, upon information and belief, the screen capture shows that Respondent is using the disputed domain name and website which is resolves in an attempt to impersonate Complainant. Complainant asserts that a potential investor reported to Complainant that several of Complainant’s directors were previously listed on Respondent’s site without authorization.
Complainant further asserts that Respondent’s website is neither authorized nor created by Complainant and argues that such use of the disputed domain name to apparently impersonate and create a false connection with Complainant and confuse consumers is neither a legitimate use of the disputed domain name nor bona fide offering of goods and services. 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 further 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 the disputed domain name that is confusingly similar to the BLACKSTONE mark. Complainant argues that it had a long and well established reputation in the BLACKSTONE mark prior to the date of registration of the disputed domain name.
Complainant contends that there can be no doubt that the respondent was aware of Complainant’s BLACKSTONE mark when he or she chose and registered disputed domain name, adding that the disputed domain name was chosen to capitalize on that confusion to attract Internet users to the resolving website for similar services. Complainant argues that this alone constitutes evidence of bad faith of a 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 adds that the BLACKSTONE mark is 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 Complainant and its famous BLACKSTONE mark. See Singapore Airlines Limited v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, very use by someone with no connection with complainant suggests opportunistic bad faith).
Complainant furthermore contends that Respondent’s use of the confusingly similar disputed domain name in connection with Respondent’s website, which purports to offer financial services similar or identical to those that have been long offered by Complainant, including alternative asset investment services, under a mark identical or confusingly similar to Complainant’s BLACKSTONE mark, is further evidence of bad faith use and registration. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the … domain name in bad faith pursuant to Policy ¶… 4(b)… (iv) because Respondent is using a domain name that is confusingly similar to the … [complainant’s] mark for commercial benefit by diverting Internet users to the …[respondent’s] website, which sells competing goods and services”).
Use of the disputed domain name to impersonate Complainant and to cause consumer confusion falsely suggests that Respondent is somehow endorsed by or affiliated with Complainant and such false association and passing off 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”).
Additionally, Complainant argues that by causing initial interest confusion, Respondent’s use and registration of the disputed domain name disrupts the business of Blackstone, which is additional evidence of bad faith use and registration. See Chiquita Canyon, LLC v. Registration Private / Domains By Proxy, LLC, FA 1607881 (Forum Apr. 22, 2015) (bad faith use and registration found for domain name that caused initial interest confusion).
Complainant adds that Respondent’s contact information in the WhoIs database lists Respondent’s address as being in “Kingstown St. Vincent and the Grenadines Moscow RU.” The contact information includes two cities and two countries in the same address, and is clearly fake. Respondent’s use of false contact information in the WhoIs database is further evidence of bad faith use and registration of the disputed domain name. See Enterprise Holdings, Inc. v. Enterptise Online Services, Ltd, FA 1444232 (Forum June 14, 2012) (“Furthermore, Complainant claims Respondent registered the domain name under a fictitious name. This means Respondent provided false WHOIS information. That alone is sufficient grounds to find bad faith registration and use of the domain name”).
Finally, Complainant argues that its BLACKSTONE mark is so well known and registered in many countries throughout the world, including the European Union, Ireland, and the United Kingdom, that Respondent is presumed to have had constructive knowledge of Complainant’s reputation at the time he or she registered the confusingly similar disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a financial services company providing services worldwide using the BLACKSTONE trademark and service mark for which it owns a portfolio of registrations including the following:
· United States service mark registration BLACKSTONE, registration number 1,986,927, registered on the Principal Register on July 16, 1996 for services in international class 36;
· United States service mark registration THE BLACKSTONE GROUP, registration number 2,198,568, registered on the Principal Register on October 20, 1998 for services in international class 36;
· United States service mark registration BLACKSTONE, registration number 2,374,887, registered on the Principal Register on August 8, 2000 for services in international class 36;
· United States service mark registration BLACKSTONE ENTREPRENEURS NETWORK, registration number 4,146,432, registered on the Principal Register on May 22, 2012 for services in international class 35;
· United States service mark registration BLACKSTONE LAUNCHPAD, registration number 5,316,226, registered on the Principal Register on October 24, 2017 for services in international Class 41;
· United States service mark registration BLACKSTONE registration number 6,359,899 registered on the Principal Register on May 25, 2021, for services in international class 35;
· United States service mark registration BLACKSTONE registration number 6,359,897 registered on the Principal Register on May 25, 2021, for services in international class 36;
· EUTM Registration number 18256705 registered on 23 December 2020 for services in Class 35;
· EUTM Registration number 843086 registered on November 16, 1999 for services in Class 36.
· United Kingdom trade mark registration number UK00003502211, registered on June 18, 2020.
Complainant has an established Internet presence and maintains a website at <www.blackstone.com>
The disputed domain name <blackstoneaif.com> was registered on February 25, 2021 and resolves to a website on which Respondent purports to present himself and offer financial services impersonating Complainant.
There is no information available about Complainant, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding.
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 provided clear, convincing and uncontested evidence of its rights in the BLACKSTONE trademark and service mark established through its ownership of its portfolio of registrations described above and its extensive use of the mark in its financial services business since it was founded in 1985 growing to a corporation with a global footprint employing over 2,500 people worldwide.
The disputed domain name consists of Complainant’s BLACKSTONE mark, the element “aif” and the gTLD <.com> extension.
Complainant’s BLACKSTONE mark is clearly recognizable as the initial, dominant and only distinctive element in the disputed domain name.
Likewise the gTLD <.com> extension may be ignored for the purposes of comparison of the disputed domain name and Complainant’s mark because in context it would be considered to be a necessary technical element for a domain name.
This Panel finds that the disputed domain name is confusingly similar to the BLACKSTONE mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test under Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the domain name, contending that
· upon information and belief, Complainant’s rights in the BLACKSTONE mark were established prior to Respondents’ registration and use of the disputed domain name;
· Respondent was not commonly known by either the BLACKSTONE mark or the disputed domain name;
· 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;
· Respondent has no relationship whatsoever with Complainant;
· Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate business or purpose.
· The screen capture of the website to which the disputed domain name resolves , shows that Respondent is using a name and mark nearly identical to Complainant’s name and BLACKSTONE mark, in connection with financial services, including alternative asset investment service, which are identical to those offered by Complainant and such use of the disputed domain name is neither legitimate nor bona fide;
· Respondent’s website is neither authorized nor created by Complainant
· furthermore upon information and belief, the screen capture shows that Respondent is using the disputed domain name and website which is resolves in an attempt to impersonate Complainant. Complainant asserts that a potential investor reported to Complainant that several of Complainant’s directors were previously listed on Respondent’s site without authorization.
· such use of the disputed domain name to apparently impersonate and create a false connection with Complainant and confuse consumers is neither a legitimate use of the disputed domain name nor bona fide offering of goods and services.
It is well established that when a complainant makes out a prima facie case that respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to establish such rights or interests.
Respondent has failed to discharge the burden of production and so 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).
This Panel accepts Complainant’s uncontested argument that that it is clearly more than a coincidence that the disputed domain name that is confusingly similar to Complainant’s BLACKSTONE mark was chosen and registered. Complainant has a long and well established reputation in the BLACKSTONE mark through its extensive use in the financial and asset management services industries, including in connection with alternative asset investments, throughout the world and it is improbable that the registrant was unaware of Complainant and its mark.
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 Complainant and its famous BLACKSTONE mark.
Not only is BLACKSTONE the prominent and dominant element of the disputed domain name but the additional letters “aif” in the disputed domain name is an acronym relating to financial services.
This Panel finds that on the balance of probabilities the disputed domain name was registered with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s name, mark, reputation and goodwill.
Complainant has adduced a screenshot of the website to which the disputed domain resolves which shows that Respondent is using the website to impersonate Respondent. The website purports to offer financial services on the website, presenting itself as being Complainant, using Complainant’s BLACKSTONE mark in a manner intended to confuse Internet users.
The website prominently displays the BLACKSTONE mark and name and presenting Respondent as a business called “Blackstone Alternative Investments Funds Plc” and inter alia purporting to provide advice on financial services and invite high net high worth individuals to provide personal information and make contact with advisors within Respondent’s organization through an online email form. This is clearly intended to confuse Internet users giving the impression that Respondent is in fact Complainant or connected with Complainant.
This Panel finds that on the balance of probabilities, by using the disputed domain name in this manner, Respondent is intentionally attempting to attract, for commercial gain, Internet users to his or her web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site and the products and services that Respondent purports to offer on the website.
In reaching this conclusion this Panel is conscious that Respondent has availed of a privacy service in registering the disputed domain name and when his details were disclosed in the course of this proceeding it became evident that he has provided false contact details to the Registrar.
This Panel finds that the disputed domain name was registered and is being used in bad faith and Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackstoneaif.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 10, 2021
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