The Complainant is Blackrock, Inc. of New York, New York, United States of America ("United States"), represented by Day Pitney LLP, United States.
The Respondent is XL Liu of Hangzhou, Zhejiang, People's Republic of China ("China"). 2. The Domain Name and Registrar
The disputed 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 June 26, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2018, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on February 5, 2018;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 24, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 8, 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 Complainant was founded in 1988 in the United States. It is the parent of a corporate group which provides investment management, financial risk management and financial advisory services around the world. It, or its subsidiary Blackrock Fund Advisors and affiliates, has USD 6 trillion funds under management. It also provides its risk management, advisory and enterprise investment system services to a wide range of clients with portfolios totaling approximately USD 15 trillion.
It owns a number of registered trademarks for ISHARES around the world including:
(a) United States Trademark Registration No. 2,422,249 for bank services, mutual fund investment advisory services, investment management services and financial services in the nature of pooled investment funds in International Class 36. This trademark was filed in 1999 and registered on January 16, 2001.
(b) United States Trademark Registration No. 5,146,723 for computer software and mobile applications for use in connection with financial services in International Class 9 and web applications and platforms and non-downloadable software for providing financial services in International Class 42. The application for this trademark was filed in 2016 and the trademark was registered on February 21, 2017.
(c) Chinese Trademark Registration No. 15172066 for a wide range of financial services in International Class 36 including brokerage services. This trademark appears to have been registered on October 7, 2015.
The Complaint also includes evidence of a large number of other registrations for ISHARES for corresponding services around the world.
As already noted, the disputed domain name was registered by the Respondent on February 5, 2018. It resolves to a pay-per-click ("PPC") page which features in English links to Ares MP3, MP3 Ares, Coin Trading, Bit Coin, Bitcoin Coin, and Bitcoin Market. At the time this decision is being prepared, the links include links for Cryptocurrency Trading and Coin Exchange. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or her case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 Panel notes that the language of the registration agreement for the disputed domain name is in English and is the default language of the proceeding unless the parties agree otherwise or there is some other good reason: see paragraph 11 of the Rules and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.5. As the website to which the disputed domain name resolves is in English, the Panel considers the rule applicable under paragraph 11 of the Rules should apply. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for ISHARES referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the ".org" gTLD, the disputed domain name differs from the Complainant's trademark solely by the addition of the letter "b" at the start of the disputed domain name. The Complainant contends that this difference is in the nature of "typosquatting": see WIPO Overview 3.0, section 1.9. It may also refer to the "b" in the Complainant's BLACKROCK mark. The Complainant's trademark is plainly visible and recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way. The disputed domain name is not derived from the Respondent's name. As already noted, the disputed domain name is confusingly similar to the Complainant's trademark. It is being used in connection with PPC links, at least some of which appear to fall within the services for which the Complainant's trademark is registered.
While use of a domain name to host a website with PPC links may be legitimate, that is typically in circumstances where the PPC links are consistent with the dictionary or non-trademark significance of the term(s) used in the domain name. See WIPO Overview 3.0, section 2.9. That is not the case here. It does not appear that the term "bishares", if it has any meaning at all, is descriptive or otherwise derived from the nature of the services which are being offered through the PPC links on the Respondent's website.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant contends that, having regard to the fame of its trademark, the Respondent must have known about the Complainant's trademark before registering the disputed domain name. It also points out that the Respondent has been found to have engaged in abusive registration of domain names in at least three other cases: Carrefour v. XL Liu,WIPO Case No. D2015-1429; V, Venteprivee. com IP S.à.r.l. contre XL Liu,WIPO Case No. D2015-2166; and Managed By Q Inc v. XL Liu,WIPO Case No. D2016-1857. Thus, Complainant contends therefore that the Respondent has and is engaging in a pattern of typosquatting registrations.
The Panel accepts that the Complainant commenced using its trademark long before the Respondent registered the disputed domain name. Even the Complainant's trademark registration in China was registered more than two years before the registration of the disputed domain name. The disputed domain name is not a name which is naturally suggested by or associated with the services being promoted through the PPC links on the Respondent's website. It does not appear to be descriptive or otherwise derived from the type of services being offered from the website to which it resolves.
In these circumstances, the Panel considers it is permissible to draw the inference that the Respondent was aware of the Complainant's trademark when registering the disputed domain name and was seeking to take advantage of its significance. The Respondent's history of typosquatting supports that inference to some extent. The Respondent has not sought to deny the inference or otherwise justify his (or her) conduct in the face of the Complainant's allegations.
In the absence of a descriptive association between the services being promoted from the Respondent's website or other justification, therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has established the third requirement under 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.
Warwick A. Rothnie
Sole Panelist
Date: August 22, 2018
Full & Egal Universal Law Academy