The Complainant is BlackRock, Inc. of New York, New York, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondents are Not disclosed Not disclosed, BlackRock, of New York, New York, United States, and Domain Admin, Whois Privacy Corp., of Nassau, New Providence, Bahamas. 2. The Domain Names and Registrar
The disputed domain names and are registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 20, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on March 26, 2019. 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 and its affiliates comprise one of the world’s preeminent financial asset management firms, being a provider of global investment management, risk management, and advisory services to institutional, intermediary, and individual investors around the world. The Complainant owns a number of registrations for the BLACKROCK mark, including United States Reg. No. 2,417,737, issued on January 2, 2001.
The Respondents registered the domain name on January 7, 2019, and the domain name on January 8, 2019. They have used the disputed domain names to establish websites containing intentionally false information, to impersonate the Complainant, and to send emails that falsely purported to be from the Complainant’s CEO. At the time of the filing of the Complaint, the disputed domain names were redirected to an apparent third-party criticism website of the Complainant’s investment practices. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s registered trademark; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and, that the disputed domain names were registered and are being used in bad faith. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names, the Complainant must prove each of the following, namely that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and,
(iii) the disputed domain names have been registered and are being used in bad faith. A. Consolidation – Multiple Domain Names
The WhoIs information for each of the disputed domain names is different. For example, the listed Registrant Organization for is BlackRock and the Registrant Organization for is Whois Privacy Corp. But paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. The Complainant argues that the disputed domain names and the websites located there are subject to common control because of their “parallel use in the same fraudulent stunt to disrupt the Complainant’s business”. Moreover, the disputed domain names: (i) share the same terms (i.e., “BLACKROCK” and “ESG”); (ii) were registered through the same registrar less than 24 hours of each other; (iii) have made use of the same web host. The Complainant argues that under these facts, consolidation is fair and equitable to all parties, and would further advance the interest of procedural efficiency. The Panel agrees with this argument and will permit consolidation of the two disputed domain names in this proceeding. B. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark BLACKROCK in its entirety. The additional term “esg” in this context – that is, being a financial industry term for companies and funds that must meet certain “Environment, Social, and Governance” criteria – does not avoid the confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of valid and subsisting trademark registrations for variations of the mark BLACKROCK as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondents.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the principal indicator of the lack of rights or legitimate interests comes from the alleged fraudulent nature of the Respondents’ use of disputed domain names and the disputed domain names being nearly identical to the Complainant’s mark. Section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides that when considering the composition of a domain name, “certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand”, such as “esg” in the instances of the disputed domain names, may trigger an inference of affiliation.
Noting that the disputed domain names were first used to impersonate the Complainant, and to send emails that falsely purported to be from the Complainant’s CEO, and that later on the disputed domain names were used to make redirects to an apparent third-party criticism website of the Complainant’s investment practices at a different domain name, the Panel is guided by the principles set out in 2.5.1 of the WIPO Overview 3.0, to find that the composition of the disputed domain names create a risk of implied affiliation with the Complainant, and thus the Respondent’s use cannot be considered “fair”. DPDgroup International Services GmbH & Co. KG v. WhoisGuard Protected / Hoster Node,WIPO Case No. D2018-2005; Regeneron Pharmaceuticals, Inc. v. Nikki Dockum, Tred,WIPO Case No. D2018-0155.
For these reasons, the Complainant has established the second element under the Policy. D. Registered and Used in Bad Faith
The Policy requires the Complainant to establish that the disputed domain names were registered and are being used in bad faith. Further to the analysis under the second element above, both the composition of the disputed domain names and their use indicate intentional targeting of the Complainant. Noting that the disputed domain names were first used to impersonate the Complainant and the Complainant’s CEO, and then, only a day before the filing of the Complaint, began redirecting to an apparent third-party website criticizing the Complainant’s investment practices, this Panel finds that the disputed domain names were registered and are being used in bad faith with the intent of attracting Internet users by creating an implied affiliation with the Complainant and the Complainant’s mark. See section 3.2.1 of the WIPO Overview 3.0. Based on the available record, the Panel finds that the Respondents registered and are using the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied this third element 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 names and be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: April 23, 2019
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