The Complainant is BlackRock, Inc. of New York, New York, United States of America (“United States” or “U.S.”), represented by Day Pitney LLP, United States.
The Respondent is Syed Hussain, Domain Management MIC of Closter, New Jersey, United States. 2. The Domain Names and Registrar
The disputed domain names , , , and (the “Domain Names”) are registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2018. On June 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 19, 2018, 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. On July 5, 2018, the Complainant filed an amendment to the Complaint to address an administrative formality.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2018.
The Center appointed Ellen B Shankman as the sole panelist in this matter on August 6, 2018. 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 dates of the Domain Names’ registrations were confirmed by the Registrar to be:
1. was registered on July 14, 2017.
2. was registered on February 26, 2018.
3. was registered on February 26, 2018.
4. was registered on February 26, 2018.
The Complainant is the registered owner of numerous trademarks in jurisdictions around the world, including, inter alia,the following trademarks in the United States covering a variety of financial services: BLACKROCK, U.S. Registration No. 2,417,737 (registered on January 2, 2001) and ISHARES, U.S. Registration No. 2,422,249 (registered on January 16, 2001), both prior to the dates of the creation of the Domain Names.
All of the Domain Names appear to resolve to parking pages with links to advertisements with financial references except for , which appears to resolve to a landing page with images of a device with “menu” and a search bar labeled “Search Ads”. 5. Parties’ Contentions A. Complainant
The Complaint alleges that the Complainant, BlackRock, Inc., along with its subsidiaries and affiliates, including, but not limited to, BlackRock Fund Advisors (collectively “BlackRock”), comprise the world’s preeminent asset management firm and a premier provider of global investment management, financial risk management, and financial advisory services to institutional, intermediary, and individual investors around the world. With assets over USD 6 trillion under management, the Complainant manages a broad range of investment portfolios on behalf of governments, corporations and individuals worldwide. In addition, BlackRock provides risk management, strategic advisory and enterprise investment system services to a broad base of clients with portfolios totaling approximately USD 15 trillion. The BlackRock name, as well as its affiliated brands, are synonymous with the highest quality of financial and investment services around the globe.
The BLACKROCK and ISHARES trademarks are major assets of the Complainant, and important symbols of its reputation and goodwill. BlackRock has widely used and promoted the BLACKROCK and ISHARES trademarks throughout the United States and internationally, and has secured numerous trademark registrations for the marks.
The Complaint further alleges that the Respondent in this case has been regularly found by UDRP panels to have engaged in abusive domain name registration, and provides numerous UDRP case citations with decisions finding the Respondent has a long history of engaging in abusive registration. Here, as in many other domain disputes against Syed Hussain over the past 15 years, including those previously brought by the Complainant, the Respondent has once again engaged in abusive domain name registration by incorporating the Complainant’s registered BLACKROCK and ISHARES trademarks into the Domain Names for the purposes of exploiting the Domain Names for the Respondent’s financial benefit.
The Domain Names are confusingly similar to the Complainant’s BLACKROCK and ISHARES trademarks respectively. The addition of the terms “global”, “careers” and “IM” (which is an understood across the financial investment industry as a reference to “initial margin”) within the Domain Names does not distinguish the Domain Names from the Complainant’s marks, and actually increases the likelihood of confusion by referring to generic terms related to the Complainant’s business operations.
The Complaint alleges that the Respondent ostensibly had knowledge of the Complainant before registering four domains which include the Complainant’s trademarks in their entireties. With knowledge of the Complainant and its trademarks, the Respondent registered the four Domain Names on or around the same date (one on July 14, 2017 and three on February 26, 2018), nearly six years after the Complainant’s most recent registration of its trademarks.
When it became aware of the Respondent’s unauthorized registration of the domain name, counsel for the Complainant sent the Respondent an email dated February 28, 2018, (a copy of which was provided), informing him of the Complainant’s trademark rights and demanding that the Respondent immediately transfer the domain name to the Complainant. The demand also reminded the Respondent that the Complainant had prevailed in a prior UDRP complaint against the Respondent for the transfer of , to which the Complainant received no response. The Complainant argues that the Respondent’s lack of response to the Complainant’s letter is further evidence of bad faith.
The Complainant states that because it did not receive a response to its Letter, the Complainant began the process of preparing a UDRP complaint for transfer of the domain name when, after conducting a “Reverse Whois” search for “Syed Hussain” discovered that the Respondent also registered the , , and domain names without the Complainant’s authorization or permission.
In addition to registration of four domain names comprising the Complainant’s marks, the “Reverse WhoIs” search revealed that the Respondent owns over 2,000 domain names comprising a variety of well-known third-party marks and brands, further evidencing the Respondent’s pattern of abusive domain name registration.
Further, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location under UDRP, paragraph 4(b)(iv). The Domain Names , and resolve to webpages with pay-per-click links to goods and services in competition with those offered by the Complainant. Most egregiously, the “Related Links” displayed at “www.” use the Complainant’s ISHARES and BLACKROCK trademarks to link to competing third-party financial services. The Respondent is clearly making use of the Complainant’s marks to intentionally create a likelihood of confusion among consumers searching for the Complainant’s goods and services to attract those consumers to its website for commercial gain.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks BLACKROCK and ISHARES, in respect of a broad range of financial goods and services. The Domain Names are confusingly similar to the trademarks owned by the Complainant. The addition of the generic or descriptive words “global”, “IM” and “careers” respectively to the trademarks does not prevent a finding of confusing similarity. Therefore, the Domain Names , , , and could be considered virtually identical and/or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith and the Respondent has a pattern of abusive domain name registration. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for both BLACKROCK and ISHARES.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademarks. Further, the Panel finds that the addition of the descriptive terms “global” “careers” and “IM” respectively to the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademarks. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256; see also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often‑impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Moreover, the Respondent is not commonly known by the Domain Names, nor is the Respondent using the Domain Names in connection with a bona fide offering of goods or services, nor for any legitimate noncommercial purpose.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, and the evidence of a pattern of abusive domain name registration, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademarks and uses it for the purpose of misleading and diverting Internet traffic for financial gain, and that the Domain Names have been registered and used in bad faith.
The Panel finds it most unfortunate that the Complainant has been required again and again to expend time, effort and resources to stop the egregious behavior of the Respondent. This finding is consistent with numerous UDRP cases that have found the Respondent to have engaged in abusive domain name registration, including those that have found for the Complainant previously against this Respondent. See, e.g., BlackRock Index Services v. Syed Hussain,WIPO Case No. D2017-1523 (“Respondent Syed Hussain has frequently been named as a respondent in UDRP proceedings and is undoubtedly familiar with the [UDRP] elements”); Compagnie Gervais Danone v. Domain Management, Syed Hussain,WIPO Case No. D2008-1239 (referencing over 20 decisions against Syed Hussain and his affiliated entities in finding that “the Respondent appears to have a long history of having engaged in abusive registration”); Deutsche Telekom AG v. Domain Management,WIPO Case No. D2011-0924 (citing over a dozen decisions against Syed Hussain in finding that “Respondent and its related entities appear to have a long history of having engaged in abusive registrations,” and are “engaged in the ‘business of cybersquatting’”); Onmobile USA LLC v. Domain Management, Syed Hussain,WIPO Case No. D2013-1038 (citing over a dozen decisions in finding that “Respondent has been the subject of numerous administrative panel findings under the Policy of bad faith registration and use of domain names”).
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant’s trademarks and reputation and the above-mentioned use of the Domain Names, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) 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 all four of the Domain Names, , , , and be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: August 9, 2018
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