Blackstone TM L.L.C. v. James Frank
Claim Number: FA1104001382633
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is James Frank (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonea.com>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2011; the National Arbitration Forum received payment on April 8, 2011.
On April 11, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <blackstonea.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 April 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2011 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@blackstonea.com. Also on April 12, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <blackstonea.com> domain name is confusingly similar to Complainant’s BLACKSTONE mark.
2. Respondent does not have any rights or legitimate interests in the <blackstonea.com> domain name.
3. Respondent registered and used the <blackstonea.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blackstone TM, LLC, is a global company which offers financial management services. Complainant owns a multitude of registrations for its BLACKSTONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,374,887 issued August 8, 2000). Complainant uses the mark to support its business functions.
Respondent, James Frank, registered the disputed domain name on March 2, 2011. The disputed domain name resolves to a site offering fraudulent financial services seeking investors. Respondent generates revenue from the investment scheme.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 contends that it has established its rights in the BLACKSTONE mark by registering that mark with a federal trademark authority, the USPTO. Previous panels have determined that registration with the USPTO is sufficient to established rights in a given mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Thus, the Panel finds that Complainant has established its rights in the BLACKSTONE mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO (e.g., Reg. No. 2,374,887 issued August 8, 2000).
Complainant also contends that the disputed domain name is confusingly similar to its BLACKSTONE mark. The <blackstonea.com> domain name includes that entire mark while adding the letter “a” and the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that neither addition sufficiently differentiates a disputed domain name from a given mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s disputed domain name and Complainant’s mark are confusingly similar pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has met its prima facie burden in this case, showing Respondent’s lack of rights or legitimate interests in the disputed domain name, which then shifts the burden to Respondent to prove that it does in fact have rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). In this case, the Panel finds that Respondent has not only failed to rebut Complainant’s prima facie case but, has failed file any kind of response. This failure allows the Panel to assume that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the entire record to make a determination on Respondent’s rights or legitmate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <blackstonea.com> domain name. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. The WHOIS information identifies registrant as “James Frank,” which the Panel finds is not similar to the <blackstonea.com> domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also asserts that Respondent is not engaging in bona fide offering of goods and services or making a legitimate or noncommercial fair use of the disputed domain name. Respondent’s disputed domain name resolves to a site offering fraudulent financial services attempting to get investors to give money. The Panel finds this allegedly illegal use is actually in direct competition with Complainant for investors. Respondent presumably makes money from this usage. The Panel finds that Respondent’s espoused usage does not constitute a bona fide offering of goods and services or a legitimate or noncommercial fair use of the disputed domain name Policy ¶ 4(c)(i) Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s <blackstonea.com> domain name disrupts its business constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site offering allegedly fraudulent financial services which directly compete with Complainant’s own legitmate investment services. Internet users may arrive at Respondent’s site and invest with them instead of with Complainant. Therefore, the Panel finds that Respondent’s disputed domain name disrupts Complainant’s business constituting bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant also alleges that Respondent is gaining commercially from the disputed domain name which constitutes bad faith registration and use. Respondent’s disputed domain name resolves to a site which offer financial investment services in direct competition with Complainant. Internet users can actually give money to Respondent from the site instead of investing with Complainant. Thus, the Panel finds that Respondent is gaining commercially from the disputed domain name by soliciting investors which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackstonea.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 18, 2011
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