Complainant is BlackRock, Inc., United States of America (“United States”), represented by Day Pitney LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard Inc., Panama / Dexter, Black Rock Invest, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on February 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 14, 2020. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was March 9, 2020. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on March 13, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 26, 2020. 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 Complainant is a United States-based company offering asset management services globally under the BLACKROCK trademark since 1988. Complainant states that it and its affiliates together manage assets worth over 7 trillion USD, and provide related services to clients with assets worth approximately 15 trillion USD. Complainant is the proprietor of numerous trademark registrations in jurisdictions around the world, including the following: - United States registration No. 2417737 for BLACKROCK (word mark), registered on January 2, 2001, in class 36; - United States registration No. 3544707 for BLACKROCK (word mark), registered on December 9, 2008, in classes 35 and 36; - European Union registration No. 000942375 for BLACKROCK (word mark), registered on February 28, 2000, in class 36; - European Union registration No. 010997096 for BLACKROCK (word mark), registered on November 26, 2012, in class 35; and, - United Kingdom registration No. UK0002177996 for BLACKROCK (word mark), registered on February 12, 1999, in class 36. Complainant operates its primary business website at “www.blackrock.com” The disputed domain name was registered on July 20, 2018. It currently resolves to a website operated by an entity calling itself “Black Rock Investments” offering cryptocurrency investment services. The record contains a notice letter to Respondent from Complainant’s representative dated November 22, 2019. 5. Parties’ Contentions A. Complainant Under the first element, Complainant states that it has registered rights in the BLACKROCK trademark for financial investment goods and services in the United States, European Union, United Kingdom and other jurisdictions, and has continuously used the BLACKROCK mark since 1988. The disputed domain name incorporates Complainant’s famous and distinctive mark in its entirety and is therefore confusingly similar to Complainant’s BLACKROCK mark. The addition of the term “invest” within the disputed domain name does not distinguish the disputed domain name from Complainant’s mark and rather increases the likelihood of confusion by referring to a generic term related to the financial industry. Under the second element, Complainant states that Respondent is unable to provide evidence sufficiently establishing a right or legitimate interest in the disputed domain name. Prior to notice of this dispute, Respondent has not made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is using the BLACKROCK mark without authorization and in proximity with unauthorized use of Complainant’s promotional video. Respondent has no rights in the “Blackrock Investments” name, and has not been commonly known by the disputed domain name. Complainant has no relationship with Respondent, and there is no evidence that Respondent has ever used the names “Blackrock”, “Blackrock Invest”, “Blackrock Investments” or “Black Rock Investments” other than in connection with registration and use of the disputed domain name. There is no evidence of a legitimately registered company with that name. Respondent owns no trademark registration for BLACKROCK or BLACKROCKINVEST nor any variation thereof, and it has no permission from Complainant to use Complainant’s marks. Respondent registered the disputed domain name well after Complainant had established rights in its marks and the marks have become famous through extensive use. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent has registered and is using the disputed domain name to falsely suggest affiliation with Complainant and Complainant’s marks. In respect of the third element, Complainant states Respondent registered and is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website. The composition of the disputed domain name evidences bad faith, as there is no conceivable non-infringing use of a domain name comprising Complainant’s BLACKROCK mark and the term “invest”. The content of the website contains false pretenses of investment opportunities and lacks regulatory compliance language and/or consumer protection information typically required of financial service providers. The contact information provided for Respondent is false, comprised of an address in Los Angeles, California and a telephone number in Phoenix, Arizona, indicating fraudulent intent on behalf of Respondent. The company number given is that of a United Kingdom company, though Respondent purports to be a United States-based company. Finally, Respondent failed to respond to Complainant’s notice letter, and used a privacy service to shield its identity, having in any case provided false or incomplete contact information to the Registrar. All these circumstances indicate that Respondent registered and is using the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the BLACKROCK mark through registrations in jurisdictions around the world, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s BLACKROCK mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the BLACKROCK mark. The disputed domain name contains the BLACKROCK mark in its entirety. The addition of the dictionary term “invest” does not prevent a finding of confusing similarity. Complainant’s BLACKROCK mark is clearly recognizable within the disputed domain name. Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between complainant’s trademark and the disputed domain name.” It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, 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) Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) 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. The circumstances stated in the Complaint and evidence in support set forth in the Annexes indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, adding the dictionary term “invest” to Complainant’s well-established BLACKROCK mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the BLACKROCK mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist. Complainant’s rights in the BLACKROCK mark predate the registration of the disputed domain name by decades. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the similarity between Complainant’s distinctive BLACKROCK mark and the disputed domain name and the fact that the disputed domain name resolves to a website offering services purportedly similar to that of Complainant, there can be no finding of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or (ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds bad faith under Policy paragraph 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the BLACKROCK mark predate by more than 30 years the registration of the disputed domain name. The BLACKROCK mark is highly distinctive in respect of the services for which it is registered and used. The disputed domain name contains Complainant’s BLACKROCK mark in its entirety, with the addition of the dictionary term “invest” that only strengthens the association with Complainant. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing a website featuring services superficially similar to those of Complainant. Respondent’s website contains numerous indicia of fraudulent activity, including false contact and company information, unauthorized use of Complainant’s promotional video, unsubstantiated promises of gains for investors, and a lack of any regulatory information that would be required on a consumer financial services website. Respondent further shielded his identity by using a privacy service when registering the disputed domain name. Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible. The Panel therefore finds that Complainant has established the third element under 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 Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: April 9, 2020
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