The Complainant is BlackRock, Inc., United States of America, represented by Day Pitney LLP, United States of America.
The Respondent is Constanze Schmidt, Office Management 24, Germany. 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 25, 2020. On February 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2020, 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 the Complainant on February 28, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 3, 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 the Respondent of the Complaint, and the proceedings commenced on March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on April 2, 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 The Complainant operates an investment management business with over USD Seven trillion under management, co-founded in 1988 by current Chairman and Chief Executive Officer, Larry Fink. The Complainant holds a portfolio of registrations for the trademark BLACKROCK, and variations of it, in numerous geographies including the European Union. United States of America Trademark Registration No. 2417737, for example, was registered on January 2, 2001. The Complainant owns the domain name The Respondent registered the Disputed Domain Name The Complainant cites its European Union trademark registrations including No. 000942375 registered on February 28, 2000 and numerous other registrations around the world, for the mark BLACKROCK as prima facie evidence of ownership. The Complainant submits that the mark BLACKROCK is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive parking page, and contends that the respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that “the inclusion of Larry Fink’s name alongside the BLACKROCK mark is evidence of Respondent’s knowledge of Complainant and Respondent’s intention to target and exploit Complainant’s Marks when registering the Disputed Domain Name” that “was intended to cause and exploit confusion between Complainant’s Marks and the Disputed Domain Name”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that each Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BLACKROCK in numerous geographies including the United States of America and European Union. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the BLACKROCK trademark, the Panel observes that the Disputed Domain Name comprises: (a) the name of the founder and CEO of the Complainant, Larry Fink, hyphenated to read “larry-fink”; (b) followed by a further hyphen; (c) followed by an exact reproduction of the Complainant’s trademark BLACKROCK; (d) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “larry-fink-blackrock”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the name of the co-founder and current CEO: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Harrods Limited v. Chris Brick,WIPO Case No. D2003-0876; Remy Cointreau Luxembourg S.A. v. Deividas Samulionis, UAB “Sentosa”,WIPO Case No. D2016-2232). This Panel accepts the Complainant’s contention that the Disputed Domain Name The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked and; (ii) Respondent has not acquired or owned any trademark or service mark rights in the names BLACKROCK or LARRY FINK, and has not been commonly known by the names LARRY FINK or BLACKROCK; and (iii) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s Marks. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. The Complainant also cites Guerlain S.A. v. PeiKang,WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”); and Veuve Clicquot Ponsardin Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (“so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). Further, the composition of the Disputed Domain Name where, as here, it consists of the founder’s name and a trademark, in this Panel’s view carries “a high risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1). This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and notes that the Disputed Domain Name resolves only to a dormant parking page. In the absence of a response, this Panel accepts the Complainant’s submission that “it is virtually impossible for Respondent to offer any type of goods or services that would not infringe Complainant’s rights or give rise to a legitimate right or interest in the Disputed Domain Name”. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark BLACKROCK is such a famous mark that it would be inconceivable that the Respondent might have registered the mark without knowing of it. See Telstra Corporation Limited v. Nuclear Marshmallows, supra; BlackRock, Inc. v. Sheng Zhang, WIPO Case No. D2014-1327(“the Complainant has a well known trade mark.”); BlackRock, Inc. v. Samantha Garnett, Black Rock Wealth,WIPO Case No. D2014-1978(“the Trade Mark is so well known and recognized”). Further, the composition of the Disputed Domain Name where, as here, it consists of the Complainant’s name and a trademark, in this Panel’s view overwhelming evidence that the Respondent was fully aware of the Complainant when registering the Disputed Domain Name and is clear evidence of bad faith. In addition, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by 20 years. On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these factors are present in this proceeding. In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark BLACKROCK and incorporated it in the Disputed Domain Name along with the name of its co-founder Larry Fink, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights. Further, this Panel finds that the Complainant used a privacy service in an attempt to avoid being held to account for its conduct. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 the disputed domain name Nicholas Weston
Sole Panelist
Date: April 14, 2020
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