Blackstone TM L.L.C. v. Bratumil Ostrowski
Claim Number: FA2304002039649
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Bratumil Ostrowski (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackstonecapitalfund.com>, registered with Hostinger, UAB.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on April 11, 2023; Forum received payment on April 11, 2023.
On April 12, 2023, Hostinger, UAB confirmed by e-mail to Forum that the <blackstonecapitalfund.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2023 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@blackstonecapitalfund.com. Also on April 12, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that, founded in 1985 by Peter G. Peterson and Stephen A. Schwarzman with $40,000 and a shared secretary, it is today is a world-renowned financial services company with hundreds of billions of dollars’ worth of assets under management. Complainant is headquartered in New York City and also has 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 3,700 people worldwide (as of December 31, 2021). Complainant’s asset management businesses include investment vehicles focused on private equity, real estate, public debt and equity, non-investment grade credit, real assets and secondary funds, all on a global basis. Complainant also provides various financial advisory services, credit services and other investment and asset management services. It also provides bespoke alternative asset products to individual investors and smaller institutions through its “Private Wealth Solutions” group. Complainant registered the BLACKSTONE mark in numerous jurisdictions around the world, including in the United States in 1996. The mark is famous.
Complainant alleges that the disputed domain name is virtually identical and confusingly similar to its BLACKSTONE mark because it incorporates the mark in its entirety and merely adds the generic/descriptive terms “capital” and “fund”, and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the BLACKSTONE mark. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the resolving website impersonates Complainant by displaying material copied from Complainant’s legitimate website and purporting to offer the same services as Complainant. Specifically, the resolving website (1) offers purported financial services that are identical and closely related to services provided by Complainant; (2) offers such purported services under the name and mark BLACKSTONE, which is identical to the BLACKSTONE Marks; (3) uses a logo that is identical to Complainant’s logo; (4) claims that Complainant’s executives are the resolving website’s executives; and (5) misappropriates copyrighted content, text and photos from Complainant’s legitimate website.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name in order to pass itself off as Complainant. Respondent registered the disputed domain name with actual/constructive knowledge of Complainant’s rights in the BLACKSTONE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark BLACKSTONE and uses it to market financial services.
Complainant’s rights in its mark date back to 1996.
The disputed domain name was registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website impersonates Complainant by displaying material copied from Complainant’s legitimate website and purporting to offer the same services as Complainant.
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”).
The disputed domain name incorporates Complainant’s BLACKSTONE mark in its entirety and merely adds the generic/descriptive terms “capital” and “fund” and the “.com” generic top-level domain (“gTLD”). The addition of a gTLD and generic or descriptive terms fails sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its BLACKSTONE mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Bratumil Ostrowski”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website impersonates Complainant by displaying material copied from Complainant’s legitimate website and purporting to offer the same services as Complainant. An attempt by a respondent to pass itself off as a complainant may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). 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); see also 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”); see also 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 . . . is evidence that Respondent lacks rights or legitimate interests in the disputed domain name”). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to attempt to pass off as Complainant for commercial gain. This can be evidence of bad faith registration and use under Policy ¶¶ 4(a)(iii) and 4(b)(iv). See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(a)(iii) and 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays material copied from Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes 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 <blackstonecapitalfund.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 4, 2023
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