World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlackRock, Inc. v. Contactprivacy.com / TSP Pilot, LLC

Case No. D2010-1219

1. The Parties

Complainant is BlackRock, Inc. of New York, United States of America, represented by Day Pitney LLP, United States of America.

Respondent is Contactprivacy.com of Toronto, Canada / TSP Pilot, LLC of Germantown, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blackrockpilot.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2010. On July 23, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 23, 2010, 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.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2010.

The Center appointed Mark Partridge as the sole panelist in this matter on September 13, 2010. 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.

Due to exceptional circumstances, the due date for Decision was extended to October 4, 2010.

4. Factual Background

BlackRock, Inc. (“BlackRock”) is a provider of global financial and investment management services and owns the following family of BLACKROCK trademark registrations in the United States:

BLACKROCK (Reg. No. 2,417,737, Registered on January 2, 2001) for “investment management services, investment advice, risk management; stock brokerage services, namely, the sales, marketing and distribution of investment company shares; mutual fund brokerage services; mutual fund administration and transfer agency services.”

BLACKROCK (Reg. No. 3,544,707, Registered on December 9, 2008) for “providing information and analysis relating to economic market data; providing business development information and advice to financial professional; business advice and information; market analysis; providing information and analysis relating to financial investments; financial investment data.”

BLACKROCK SOLUTIONS (Reg. No. 2,645,470, Registered on November 5, 2002) for “financial services, namely, providing risk management services, financial management services, securities trading, insurance consultation, investment, management and investment advisory services; temporary use of on-line non-downloadable computer software for use by others in the evaluation, analysis, and risk assessment of financial instruments.”

BLACKROCK FINANCIAL MANAGEMENT (Reg. No. 2,241,410, Registered on April 27, 1999) for “financial advisory and asset management services, excluding development or syndication of commercial real estate.”

BLACKROCK ALTERNATIVE ADVISORS (Reg. No. 3,592,375, Registered on March 17, 2009) for “providing financial management services, including investment management services; investment advice; financial investment in the field of securities and other financial instruments and investments in all manner of tangible assets; financial research and financial analysis; financial risk management.”

BlackRock’s earliest claimed trademark usage dates back to June 22, 1992, In addition to its United States trademarks BlackRock owns numerous corresponding foreign registration and application in countries throughout the world including Australia, Brazil, Canada, People’s Republic of China, the European Union, India, Japan, Switzerland and the United Kingdom of Great Britain and Northern Ireland. BlackRock maintains offices in 24 countries around the world and manages assets that exceed USD 3.3 trillion in value.

The <blacrockpilot.com> domain name was registered on August 31, 2009.

5. Parties’ Contentions

A. Complainant

BlackRock contends that its global reputation is a result of the high quality of financial and investment services offered through its experienced professionals using BlackRock’s disciplined investment process and sophisticated analytical tools which consistently add value to its client portfolios. It further contends that the disputed domain name is confusingly similar to the mark BLACKROCK, that Respondent does not have any rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith by Respondent.

B. Respondent

Respondent did not formally respond to the Complaint but did send an email to the Center and the Registrar, Tucows, on August 24, 2010, stating “ownership of this domain was released over two weeks ago.” Two further email communications from Respondent were sent to the Center and the Registrar on August 25, 2010 indicating it had released ownership of the disputed domain name.

C. Claim that the Domain Name was Released

Respondent claimed it had released ownership of the disputed domain name; however, according to the Registrar, the disputed domain name had not been released and is still in the name of Respondent. Given that the disputed domain name was indeed registered to Respondent at the time the Complaint was filed and that no settlement agreement to transfer the disputed domain name to Complainant was reached between the parties, the Panel shall proceed to determine the merits of Complainant’s case.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated that it owns registered trademark rights in the mark BLACKROCK. The addition of the descriptive phrase “pilot” is insufficient to avoid confusion. In fact, given that Complainant is well-known for providing financial advisory services, the suggestive term “pilot” is an apt reference to Complainant’s services and enhances the potential for confusion.

Accordingly, the disputed domain name is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

According to the case record, Respondent does not appear to be known by the name Black Rock Pilot nor is it authorized by Complainant to use the name. The disputed domain name no longer resolves to an actual website. However, at the time of the Complaint filing the disputed domain name resolved to a website which was not being used for a noncommercial good faith purpose, but instead for a commercial purpose that was not legitimately connected to Complainant. Although Respondent appeared to be offering financial advisory services at its website, a deliberately infringing use of another’s mark does not constitute a bona fide offering of goods or services. As stated in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847:

“We find instead that name was selected and used by [r]espondent with the intent to attract for commercial gain Internet users to [r]espondent’s web site by trading on the fame of Complainant’s mark. We see no other plausible explanation for [r]espondent’s conduct and conclude that use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a [r]espondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”

The same conclusion is obtained here, and the Panel therefore finds that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It appears that the disputed domain name was deliberately used for commercial gain based on confusion or mistake with Complainant’s mark. Complainant’s mark was being used to lead Internet users to a site that offered financial advisory services. The site was not approved or authorized by Complainant and did not specifically relate to Complainant’s business. Persons seeking information or material relating to Complainant could be misled in a manner that is deceptive and contrary to Complainant’s right to control its mark. Moreover, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith registration and use.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For all 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 <blackrockpilot.com> be transferred to Complainant.

Mark Partridge
Sole Panelist
Dated: October 1, 2010

 

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