Blackstone TM L.L.C. v. Domain Admin / E-Promote
Claim Number: FA2211002020172
Complainant is Blackstone TM L.L.C. ("Complainant"), United States, represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., United States. Respondent is Domain Admin / E-Promote ("Respondent"), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonefinancial.com>, registered with Name.com, 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 Forum electronically on November 14, 2022; Forum received payment on November 14, 2022.
On November 15, 2022, Name.com, Inc. confirmed by email to Forum that the <blackstonefinancial.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 November 16, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2022 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@blackstonefinancial.com. Also on November 16, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is a financial services company founded in 1985 that employs more than 3,700 people worldwide and has hundreds of billions of dollars in assets under management. Complainant has used BLACKSTONE in connection with its services for many years. Complainant owns various trademark registrations for BLACKSTONE and related marks in the United States and other jurisdictions, with first use dates as early as 1990, and asserts that the BLACKSTONE marks are among the most famous marks in the financial services and asset management industries.
Respondent is the current registrant of the disputed domain name <blackstonefinancial.com>. The domain name registration record includes a creation date of September 2005. The domain name resolves to a parking page composed of links to competing financial services businesses and a statement offering the domain name for sale. Complainant asserts that an individual claiming to be a regional manager for Complainant has been using the disputed domain name to impersonate Complainant in email communications. Complainant states that Respondent is not commonly known by the domain name, is not a licensee of Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <blackstonefinancial.com> is confusingly similar to its BLACKSTONE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is 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").
The disputed domain name <blackstonefinancial.com> combines Complainant's registered BLACKSTONE trademark with a generic term for Complainant's services, adding the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Blackstone TM L.L.C. v. Host Master / 1337 Services LLC, FA 1918692 (Forum Nov. 25, 2020) (finding <blackstone-financials.com> and <blackstonefinncials.com> confusingly similar to BLACKSTONE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, 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).
The disputed domain name incorporates Complainant's registered mark without authorization. It is being used to display pay-per-click links to competing businesses and to offer the domain name for sale. Neither of these uses gives rise to rights or legitimate interests under the Policy. See, e.g., Toronto-Dominion Bank v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1894062 (Forum May 24, 2020) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, 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 name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, 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), bad faith may be shown by evidence that Respondent registered the disputed 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 registered or acquired a domain name incorporating Complainant's well-known mark. Respondent is using the domain name to display pay-per-click links to competing businesses and to promote the domain name for sale. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Toronto-Dominion Bank v. Carolina Rodrigues / Fundacion Comercio Electronico, supra (finding bad faith registration and use in similar circumstances).
The Panel also notes Respondent's failure to offer any alternative explanation for its selection or intended use of the disputed domain name, and Respondent's history of adverse determinations under the Policy, see, e.g., Oxford Asset Management Co. Ltd. v. Domain Admin, E-Promote, D2017-0740 (WIPO June 27, 2017) (ordering transfer of <oxfordassetmanagement.com>); Capital One Financial Corp. v. Domain Admin / E-Promote, FA 1602631 (Forum Mar. 10, 2015) (ordering transfer of <capitaloneinsurance.com>).
Complainant also alleges that the domain name has been used to impersonate Complainant, presumably for fraudulent purposes. However, in the absence of evidence connecting this activity to Respondent, the Panel declines to consider this allegation.
The Panel finds that the disputed domain name was registered and is 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 <blackstonefinancial.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 8, 2022
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