Blackstone TM L.L.C. v. Eze Emmanuel
Claim Number: FA2201001980684
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Eze Emmanuel (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <blackstone-forexinvest.com> and <blackstone-investment.com>, 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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2022; the Forum received payment on January 17, 2022.
On January 19, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <blackstone-forexinvest.com> and <blackstone-investment.com> 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 January 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2022 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@blackstone-forexinvest.com, postmaster@blackstone-investment.com. Also on January 19, 2022, 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.
A timely Response was received and determined to be complete on January 19, 2022.
On January 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an investment company. Complainant has rights in the BLACKSTONE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,986,927, registered Jul. 16, 1996). See Compl. Ex. 2. Respondent’s <blackstone-forexinvest.com> and <blackstone-investment.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and add the words “forex invest” or “investment”, along with hyphens and the “.com” generic top level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <blackstone-forexinvest.com> and <blackstone-investment.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its BLACKSTONE mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and purports to offer competing services on the disputed domain names’ resolving websites.
Respondent registered and uses the <blackstone-forexinvest.com> and <blackstone-investment.com> domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant and purportedly offering competing services. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the BLACKSTONE mark.
B. Respondent
The <blackstone-forexinvest.com> and <blackstone-investment.com> were registered on January 10, 2022 and January 7, 2022 respectively.
Respondent filed a brief response to the Complaint alleging that he was just a programmer and not the ultimate owner of the domain name. He claims to have “built” the site, and “it happens that the owner of the site keep [sic.] choosing the name Blackstone-this-and-that. I have wanted him not to choose a name that relates to any company, industry or even someone’s name…”
Respondent then claims to have “deleted the site files from [the] Host,” and concludes his response with “I’m just a programmer who build websites for other people, I’m not the owner of the site.”
1. The domain names <blackstone-forexinvest.com> and <blackstone-investment.com> are confusingly similar to trademarks or service marks in which the Complainant has rights.
2. Respondent has no rights or legitimate interests in the Disputed Domains.
3. Under the Policy the Respondent is responsible for the registration of the disputed domain names and their use regardless of whether the Respondent made the decision to register the domain names or whether it controlled the use of those names.
4. The Disputed Domain Names were registered and 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.
Complainant is a renowned financial services company with hundreds of billions of dollars’ worth of assets under management. Though headquartered in the United States, Complainant is located world-wide including in France, Germany, India, Singapore, China, Japan, Australia, Mexico and Brazil and employs more than 2,500 people globally. Complainant was founded in 1985 and provides asset management services and financial advisory and credit services. Complainant’s main website is located at www.blackstone.com which contains investment materials, reports, videos and commentary, press releases, etc.
Complainant claims rights in the BLACKSTONE mark through its registrations with the USPTO and with a variety of other national trademark offices around the world (e.g., Reg. 1,986,927, registered Jul. 16, 1996). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant (either itself or through its affiliates) has also successfully proven its ample rights in the BLACKSTONE mark in a number of other UDRP actions. See Blackstone Financial Services Inc. v. Black Stone Securities, FA 1214662 (Forum Sept. 17, 2008), and Blackstone TM L.L.C. v. James Frank, FA 1382633 (Forum May 18, 2011). Since Complainant provides evidence of registration, the Panel finds Complainant has demonstrated rights in the BLACKSTONE mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <blackstone-forexinvest.com> and <blackstone-investment.com> domain names are identical or confusingly similar to Complainant’s BLACKSTONE mark. Under Policy ¶ 4(a)(i), adding generic or descriptive words, hyphens, and the “.com” gTLD are all generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Here, the disputed domain names both incorporate the BLACKSTONE mark in its entirety, add a hyphen and the “.com” gTLD, and each incorporates either the words “forex invest” or “investment.” Therefore, the Panel finds Respondent’s domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Names because the Respondent is not commonly known by either of the Disputed Domain Names nor has it been authorized by Complainant to register or use the BLACKSTONE marks. Under Policy ¶ 4(c)(ii), relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence affirming otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in a disputed domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). Here, the WHOIS of record identifies Respondent as “Eze Emmanuel,” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its BLACKSTONE mark in the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <blackstone-forexinvest.com> and <blackstone-investment.com> domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant and offer competing services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain names’ resolving websites, which both resolve to the same website which purports to offer investment services under the name BLACKSTONE. The website also features a photo of Complainant’s offices with Complainant’s own BLACKSTONE sign, features and commentary by the Complainant’s officers. In short, the evidence presented by Complainant clearly establishes that Respondent is attempting to impersonate and create a false connection with Complainant. Panels have consistently held that blatant unauthorized use of a Complainant’s marks is clear evidence that Respondent has no rights or legitimate interests in a disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name) and Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Forum Oct. 6, 2003) ( “Respondent’s attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant, coupled with Respondent’s failure to respond to the Complaint, is evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”)
Therefore, the Panel finds Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses under Policy ¶¶4(c)(i) and (iii).
Under the third requirement of the Policy, the Complainant must establish that each of the Disputed Domain Names have been registered and are being used in bad faith by the Respondent. “These are conjunctive requirements; both must be satisfied for a successful complaint.” Warner Bros. Entertainment Inc. v. Karl Allberg FA2002001881913 (Forum Feb. 19, 2020).
As an initial matter, the Panel notes that Respondent claims that he was just a programmer and not the ultimate owner of the domain name and therefore should not be found liable under the Policy. He then attempts to absolve himself from any liability by claiming that “it happens that the owner of the site keep [sic.] choosing the name Blackstone-this-and-that. I have wanted him not to choose a name that relates to any company, industry or even someone’s name…”
That said, the Respondent provides no other evidence in its response. The Respondent does not name its client, does not provide a copy of an agreement to do the work, nor any other indicia that supports his claims. Regardless of whether such proof was provided, however, previous Panels have found that “acting in the name or on behalf of a client does not waive any Registrant of the domain name of the obligation to show good faith in the registration and use of the domain name for which registration is sought.” See UBS AG v. Jouet Daniels, FA 1804001783500 (Forum May 30, 2018).
This issue has also come up in several other cases recently, where similar responses were filed. See Allianz v. Harryson Trey, D2021-1309 (WIPO Jul. 1, 2021) and National Carriers, Inc. v. Kenkoh Darlene Mesei D2021-1533 (WIPO Aug. 27, 2021). In neither case did the panels directly address responses in terms of whether those statements can be used to refute bad faith. However, both cases found in favor of the Complainant. This Panel agrees that the mere unsubstantiated assertion that the disputed domain names were registered by a third party does not absolve the named registrant of a domain name from understanding and complying with its obligations under a domain name registration agreement which it “signed.” In other words, for purposes of the Policy, even if there were a different beneficial owner of the domain name, liability under the Policy is borne by the named registrant in the registration agreement. Therefore, for purposes of evaluating bad faith, the Respondent is responsible for the registration of the disputed domain names and their use regardless of whether it controlled such registration or use.
Complainant argues that Respondent registered and uses the <blackstone-forexinvest.com> and <blackstone-investment.com> domain names in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and purportedly offer competing services is generally considered evidence of bad faith disruption for commercial gain. See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant provides screenshots of the disputed domain names’ resolving websites, which feature Complainant’s mark and offer purported investment services, which Complainant argues is likely false and perhaps a front for phishing purposes. See Compl. Ex. 5.
In addition, Complainant argues that Respondent registered the <blackstone-forexinvest.com> and <blackstone-investment.com> domain names with bad faith actual knowledge of Complainant’s rights in the BLACKSTONE mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a mark into a domain name, as well as Respondent’s use of the disputed domain name. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Not only are the BLACKSTONE marks wholly incorporated into both domain names, but the Respondent blatantly pulled material off of the Complainant’s website and posted that material attempting to pass it off as its own. It is clear that Respondent is attempting to trade off the goodwill of the Complainant. See Compl. Exs. 5. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackstone-forexinvest.com> and <blackstone-investment.com> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: February 7, 2022
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