The registrant of the domain BlackstoneFirm.com had no rights to the BLACKSTONE mark; furthermore, he pointed the domain to a page under Blackstone.com.
Blackstone TM LLC filed a UDRP to get the domain via the National Arbitration Forum.
This type of forwarding does not indicate any good intentions by the Respondent. As the Forum (NAF) panelist pointed out, this is not an indication of fair use:
Pointing a domain name containing the Complainant’s trade mark to the Complainant’s own web site without explanation so as to suggest an affiliation with a Complainant where there is none, such as the Respondent’s use of the Domain Name in this case, is disruptive and bad faith registration and use.
Final decision: Grant the transfer of the domain name BlackstoneFirm.com to the Complainant, Blackstone TM LLC.
DECISION – Blackstone TM L.L.C. v. John Scherillo / BERGEN BUNKERS AS
Claim Number: FA2311002071965
PARTIES
Complainant is Blackstone TM L.L.C. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is John Scherillo / BERGEN BUNKERS AS (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is blackstonefirm.com, (‘the Domain Name’) registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 21, 2023; Forum received payment on November 21, 2023.
On November 21, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the blackstonefirm.com Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@blackstonefirm.com. Also on November 22, 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 December 13, 2023 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is the owner of the trade mark BLACKSTONE, registered, inter alia, in the USA for financial services with first use recorded as 1990.
The Domain Name registered in 2023 is confusingly similar to the Complainant’s trade mark adding only the generic word ‘firm’ and the gTLD .com which does not prevent said confusing similarity.
The Respondent does not have rights or a legitimate interest in the Domain Name, is not commonly known by it and has not been authorised by the Complainant.
The Domain Name has been pointed to the Complainant’s own site which is impersonation of the Complainant and not a bona fide offering of services and/or a legitimate non commercial or fair use. It is registration and use in bad faith disrupting the Complainant’s business in actual knowledge of the Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The Complainant is the owner of the trade mark BLACKSTONE, registered, inter alia, in the USA for financial services with first use recorded as 1990.
The Domain Name registered in 2023 has been pointed to the Complainant’s own site.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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”).
Identical and/or Confusingly Similar
The Domain Name consists of the Complainant’s BLACKSTONE mark (which is registered in USA for financial services with first use recorded as 1990), the generic word ‘firm’ and the gTLD .com.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant’s mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The addition of the generic term ‘firm’ does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The gTLD .com does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s BLACKSTONE registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied in relation to the Domain Name.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept.17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name has been pointed to the Complainant’s website without the Complainant’s authorisation which is not bona fide use or legitimate non commercial fair use. See Bank of America Corporation v Show Girls, FA 1783413 (Forum May 30, 2018).
The Respondent has not answered this Complaint and has not rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s mark. The use of the Domain Name to point to the Complainant’s own web site shows the Respondent was aware of the Complainant and its business at the time of registration or that Domain Name. Blackstone is distinctive and not a descriptive term.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Pointing a domain name containing the Complainant’s trade mark to the Complainant’s own web site without explanation so as to suggest an affiliation with a Complainant where there is none, such as the Respondent’s use of the Domain Name in this case, is disruptive and bad faith registration and use. See McKinsey Holdings Inc. v Mgr. Jakob Bystron, FA 1330650 (Forum July 23, 2010)
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraph 4(b)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the blackstonefirm.com domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 13, 2023
