The Complainant is BlackRock, Inc. of New York, United States of America, represented by Day Pitney LLP, United States of America.
The Respondent is Samantha Garnett, Black Rock Wealth of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2014. On November 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2014.
The Center appointed John Swinson as the sole panelist in this matter on December 17, 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 BlackRock, Inc, a provider of financial and investment management services. The Complainant is a U.S. company, founded in 1988. It has more than 60 offices in over 30 countries around the world, and as at November 7, 2014, its assets under management exceed USD 4.3 trillion.
The Complainant owns a number of trade mark registrations and applications for BLACKROCK in approximately 40 jurisdictions, including:
- United States Registration Number 2,417,737, registered on January 2, 2001;
- Community Trademark Registration Number 000942375, registered on February 28, 2000; and
- Canada Registration Number TMA777154, registered on August 17, 2009,
(collectively referred to as the "Trade Mark").
The Complainant also owns a number of domain names which incorporate the Trade Mark, including , , , and .
The Respondent is Samantha Garnett of the United Kingdom, whose organization details are listed as Black Rock Wealth. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was created on October 1, 2014.
The website at the Disputed Domain Name previously described the services of "BlackRock Wealth Partners." It currently reverts to an error webpage. 5. Parties' Contentions A. Complainant
The Complainant's contentions are as follows. Identical or Confusingly Similar
The Complainant submits that the Disputed Domain Name contains the Trade Mark in its entirety and is thus confusingly similar to the Trade Mark. It further submits that the addition of the word "wealth" enhances the similarity due to the connection of that term with the services offered by the Complainant under the Trade Mark. Also, many of the Complainant's domain names add a descriptive word to the Trade Mark, so the additional term does not diminish a finding of a likelihood of confusion with the Trade Mark.
The Complainant submits that the website previously hosted at the Disputed Domain Name directly copied the Trade Mark in a logo design placed at the top of the website by using the same, single-word, large "B," large "R" format employed by the Complainant. The Respondent continued to use the Trade Mark throughout the website in advertising its goods and services, which were confusingly similar to those offered by the Complainant. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. To the Complainant's knowledge, the Respondent does not own any trade marks encompassing the Disputed Domain Name, is not known by the Disputed Domain Name, and is not making a legitimate, noncommercial, or fair use of the Disputed Domain Name.
The Complainant submits that the Respondent registered the Disputed Domain Name long after Complainant had established rights in the Trade Mark, and as the Trade Mark is so well known and recognized, there can be no legitimate use by the Respondent.
The Complainant submits that the Respondent's lack of legitimate interest is made clear by its opportunistic bad faith use and registration of the Trade Mark in the Disputed Domain Name, and by the fact that it has registered identical web pages using the marks of other prominent financial companies. The Complainant submits that the Respondent's intention is to divert consumers looking for the Complainant's services and to deceive them into believing the website is an official website run by the Complainant in order to fraudulently phish for financial information and obtain payment for services that the Respondent will never provide. Registration and Use in Bad Faith
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits that the Respondent is using the Trade Mark in the Disputed Domain Name in a way that creates a false association with the Complainant, in an attempt to bolster credibility and perpetrate financial frauds, phish for personal information, and defraud unsuspecting individuals.
The Complainant submits that the Respondent appears to be perpetrating the same types of fraud against other trade mark owners, including at the domain names and . The websites hosted at these domain names are nearly identical in design to the website previously hosted at the Disputed Domain Name. The Complainant submits that this pattern is evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
For the purposes of testing confusing similarity, it is well established that the generic Top-Level Domain, ".com," can be ignored.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with the descriptive term "wealth." As the Complainant submitted, the term "wealth" is connected with the services provided by the Complainant.
It is likely that a person would interpret this descriptive addition as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., Statoil ASA v. N/A Alex,WIPO Case No. D2013-0713).
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. There is currently no active website at the Disputed Domain Name (it reverts to an error page). The Complainant has provided evidence that the Disputed Domain Name previously reverted to a website which used the Trade Mark. The Panel accepts that this was an attempt to divert Internet users who were seeking the Complainant's website, and thus was not a bona fide offering of goods or services.
- The Respondent has not been commonly known by the Disputed Domain Name. The name of the Respondent's organization is Black Rock Wealth. A company with such name could well have a legitimate interest in a domain name featuring "Black Rock Wealth." However, there is no evidence before the Panel of any business registration or of the Respondent trading under the name "Black Rock Wealth". Merely registering a company with a name similar to a domain name in dispute (if "Black Rock Wealth" is even registered) is not conclusive evidence that the Respondent has been commonly known by the Disputed Domain Name (see, e.g. JT International v. Daniel Smith,WIPO Case No. D2014-1306).
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Panel accepts the Complainant's submissions and evidence that the website at the Disputed Domain Name was likely being used in relation to a phishing scam, along with similar websites reflecting the trade marks of other financial services companies. Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services (see, e.g. Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679).
The Respondent had the opportunity to demonstrate rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has been operating since 1988, and has owned registered trade marks since 2000. It currently operates in over 30 countries around the world. The Complainant is famous and influential. The Disputed Domain Name was registered on October 1, 2014. In light of the reputation of the Complainant and the scope of its operations, it is likely that the Respondent had knowledge of both the Complainant and the Trade Mark at the time the Disputed Domain Name was registered. In some circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and its Trade Mark and registered the Disputed Domain Name in bad faith.
The Complainant submits that the website previously hosted at the Disputed Domain Name was being used in connection with a phishing scam. While the Complainant has not provided any specific evidence of such a scam being carried on under the Disputed Domain Name, the Panel accepts the Complainant's evidence that the Respondent has produced identical websites at other domain names, which relate to at least two other financial services companies. Based on this, the Panel can reasonably infer that this series of websites, including the one hosted at the Disputed Domain Name, were likely being used for some illegitimate purpose, and in bad faith. Additionally, the Panel has undertaken its own investigations, which it is entitled to, and come across a "clone firm" warning from the UK's Financial Conduct Authority, issued on November 7, 2014. The warning states that the Respondent is using the contact details listed in the Complaint "as part of their tactics to scam people in the UK."
The Panel finds that, in producing a website which uses the Trade Mark, the Respondent was intentionally attempting to attract, for commercial gain, Internet users to that website by creating a likelihood of confusion with the Trade Mark as to the source of the website (see paragraph 4(b)(iv) of the Policy, and see, e.g., Karen Millen Fashions Limited v. Leonie Helena,WIPO Case No. D2013-0001).
The Respondent had the opportunity to make submissions to rebut the Complainant's allegations but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of paragraph 4(a) of the Policy. 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.
John Swinson
Sole Panelist
Date: December 31, 2014
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