The Complainant is Blackrock, Inc. of New York, United States of America, represented by Day Pitney LLP, United States of America.
The Respondent is Registration Private / Eugene Nowee of Scottsdale, Arizona, United States of America / Marbella, Malaga, Spain. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2014. On March 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center notified the Complainant that the Complaint was administratively deficient. The Complainant filed an amendment to the Complaint on April 2, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed William P. Knight as the sole panelist in this matter on May 13, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a large, international financial and investment management company which operates worldwide. The Complainant has a number of trade mark registrations in numerous countries, including for BLACKROCK, BLACKROCK SOLUTIONS, BLACKROCK FINANCIAL MANAGEMENT and BLACKROCK ALTERNATIVE ADVISORS, and trades under the name “Blackrock”. The earliest date of registration for a trade mark registered by the Complainant comprising the word “blackrock” is June 22, 1992.
The Domain Name was registered on June 26, 2013. The website at the Domain Name features the following text: “This domain has just been registered for one of our customers! Domain registration and webhosting at best prices.” The website at the Domain Name also features an image depicting a road work sign. There is no other substantive content on the website. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainant asserts:
(i) that the Domain Name is confusingly similar to its BLACKROCK trade marks;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant asserts that the Domain Name is confusingly similar to its family of BLACKROCK trademarks as the Domain Name fully incorporates the registered trade mark, notwithstanding the inclusion of the additional words “fund” and “managers”. The Complainant contends that these additional words do not decrease any confusing similarity as they are descriptive of the services provided by the Complainant. The Complainant argues that the inclusion of descriptive words in the Domain Name in combination with the BLACKROCK trade mark instead increases the confusing similarity between the Complainant’s mark and the Domain Name. The Complainant also provides evidence that emails have been sent from email addresses associated with the Domain Name which plainly seek to deceive recipients that they have been sent by the Complainant, inviting the recipients to provide personal information and engage in financial transactions. The Complainant has produced evidence of emails soliciting details and money from its existing customers who have been caused actual confusion and deception by such conduct.
The Complainant argues that the Respondent does not own any trade mark registrations relating to the Domain Name, is not known for the Domain Name and is not making fair use of the Domain Name. The Complainant contends that the BLACKROCK mark is sufficiently famous such that any use of the Domain Name by the Respondent is not legitimate. The Complainant nevertheless argues that the use of the Domain Name to solicit information and money under the guise of the Complainant is not legitimate fair use.
The Complainant argues that the Respondent’s use of the Domain Name to pass off as being associated with the Complainant within email solicitations is evidence of knowledge on the part of the Respondent of the Complainant’s rights in the BLACKROCK mark. The Complainant argues that the use of the Domain Name to defraud the Complainant’s customers via email, coupled with the lack of activity on the website at the Domain Name, is evidence of use and registration in bad faith. The Complainant also points to the Respondent’s failure to respond to a cease and desist letter as further evidence of bad faith. The Complainant contends that the Respondent’s use of the Domain Name puts the Complainant at risk of damage. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:
1. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2 The 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.
Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements. The Respondent’s default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383). A. Identical or Confusingly Similar
The Panel finds that the Complainant has trade mark rights in BLACKROCK for the purposes of the Policy. The Panel is also satisfied that the Domain Name is confusingly similar to the Complainant’s BLACKROCK trade mark. The Panel is satisfied that the dominant component of the Domain Name is the compound word “blackrock”, which has gained a significant international reputation in the field of financial and investment services. The additional words “fund” and “managers” comprised in the Domain Name, when combined, are descriptive of the services provided by the Complainant. These two additional descriptive words do nothing to diminish the confusing similarity caused by the primary word “blackrock”. The generic Top-Level Domain (“gTLD”) “.com” does not carry any distinguishing weight. The Panel notes that the Complainant has not provided any evidence of the actual confusion referenced in the Complaint. As a result, this aspect of the Complaint was not given weight.
The Panel finds that the first element of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel finds that the Respondent was most likely aware of the Complainant’s established reputation and trade mark rights at the time of registering the Domain Name. The Respondent’s use of the words “fund” and “managers” in conjunction with the Complainant’s BLACKROCK mark in registering the Domain Name indicates an understanding of the nature of the Complainant’s business, and therefore its existence. In the absence of any explanation to the contrary by the Respondent, the Panel accepts that the Respondent has not been granted authorisation from the Complainant to use its BLACKROCK trade mark in the Domain Name.
The website at the Domain Name offers no indication that the Respondent is making a legitimate use of the Complainant’s BLACKROCK mark. The only unique material displayed on the website at the Domain Name is a notice stating that the Domain Name has been purchased by the Respondent and an additional sentence promoting domain name registration services. The other use by the Respondent of the Domain Name, using its corresponding email addresses as evidenced by the Complainant, is plainly not legitimate use.
In such circumstances, and given the use made of the Domain Name by the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel finds that the second element of the UDRP is satisfied. C. Registered and Used in Bad Faith
In the Panel’s view, there can be no doubt whatsoever that the Respondent was fully aware of the Complainant’s international trade mark rights in the mark BLACKROCK. The Respondent’s use of the Domain Name’s corresponding email addresses to facilitate fraudulent misrepresentations as to a relationship with the Complainant evidences an intimate understanding of the Complainant’s business and clearly demonstrates registration and use in bad faith of.
Therefore, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William P. Knight
Sole Panelist
Date: May 23, 2014
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