World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlackRock, Inc. v. WideArc Solutions

Case No. D2010-1407

1. The Parties

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

The Respondent is WideArc Solutions of Plano, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blackrockacquisitions.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2010. On August 20, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On August 20, 2010, GoDaddy.com, Inc. 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 the Respondent of the Complaint, and the proceedings commenced on August 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2010.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 30, 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.

4. Factual Background

The Complainant is a Delaware corporation based in New York and listed on the New York Stock Exchange. Founded in 1988, the Complainant and its affiliates offer financial and investment management services in the United States and globally, with some 1500 investment professionals serving in offices located in 24 countries. According to the Complainant’s website at “www.blackrock.com”, the Complainant had more than USD 3.3 trillion in assets under its management as of March 31, 2010. The Complainant’s clients include individuals as well as corporations, pension plans, sovereign wealth funds, and other institutions.

The Complainant and its affiliates hold several registered trademarks in the United States and other countries that consist of the BLACKROCK name alone or in combination with descriptive terms. These include the following United States Trademark Registrations:

MARK

US Registration No.

DATE OF REGISTRATION

BLACKROCK FINANCIAL MANAGEMENT

2241410

April 27, 1999

BLACKROCK

2417737

January 2, 2001

BLACKROCK SOLUTIONS

2645470

November 5, 2002

BLACKROCK

3544707

December 9, 2008

BLACKROCK ALTERNATIVE ADVISORS

3592375

March 17, 2009

The Complainant’s investment funds include BlackRock Global Energy and Resource Trust and BlackRock Global Resources Fund, which invest in energy and natural resources companies.

The Domain Name was created on April 13, 2009 and is registered to the Respondent. The administrative and technical contact shown on the Registrar’s WhoIs database is a Mr. Jim O’Reilly at the same postal address listed for the Respondent in Plano, Texas, with an email address in the <widearcsolutions.com> domain name. That domain name does not currently resolve to an active website, but archived pages of the website formerly associated with the domain name, available through the Internet Archive’s Wayback Machine, identify Mr. O’Reilly as the president of a Texas web hosting and web applications development company named WideArc Solutions. According to the franchise tax database operated by the Texas Secretary of State, WideArc Solutions, LLC of Plano, Texas is a limited liability company with the current status of “not in good standing”.

The Domain Name resolves to a website operated by Black Rock Acquisitions, LLC, “a Dallas-based land management company that is primarily focused on clean, domestic energy.” According to the website, the company buys, sells, and leases property for oil and natural gas production, wind energy projects, and pipeline rights-of-way, as well as for farming, ranching, and hunting. The company solicits investors interested in its strategy of “targeting properties that are able to generate quick cash flow.” The website lists a company address in Addison, Texas. The Texas franchise tax database shows Black Rock Acquisitions, LLC as a limited liability company located in Plano, Texas, with Mr. James O’Reilly as the registered agent. The company was registered with the Texas Secretary of State on December 31, 2007. The company’s current status is shown as “not in good standing”.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is confusingly similar to its BLACKROCK marks and that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant infers that the Respondent registered and used the Domain Name in bad faith, in an effort to attract investors seeking information about the Complainant’s investment services. The Complainant argues that this potential confusion is heightened by the fact that the Respondent advertises investments in energy and natural resources, areas in which the Complainant is also active.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules:

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably holds rights in the BLACKROCK mark. The Domain Name includes this mark in its entirety. The likelihood of confusion is not lessened by adding the generic term “acquisitions” to this name, especially since the Complainant is regularly involved in acquiring investment assets.

The Panel concludes that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

It is undisputed that the Complainant has not authorized the Respondent to make use of the BLACKROCK mark in the Domain Name or otherwise. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name:

“(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.”

The Respondent has not come forward with a Response, but it is evident from a perusal of the website associated with the Domain Name that it concerns the business of a limited liability company bearing a name corresponding to the Domain Name. That company was registered in Texas in 2007, before this dispute arose, and it appears from the website that the Respondent offers commercial services under the name of the registered company. The Complainant may, of course, choose to explore trademark remedies against this business, but on the available record in this UDRP proceeding it appears that the Respondent has rights or legitimate interests in the Domain Name within the meaning of paragraph 4(c)(i) and (ii).

Accordingly, the Panel concludes that the second element of the Complaint has not been established.

C. Registered and Used in Bad Faith

Given the conclusion above on the Respondent’s rights or legitimate interests, there is no need to rule on the third element of the Complaint. In any event, the Panel cannot agree with the Complainant that the evidence establishes the probability that the Domain Name was registered and used in a bad faith attempt to divert potential investors from the Complainant. Rather, it appears that the Domain Name was used in connection with a bona fide business known by a corresponding name. Absent evidence that this business was a sham or operated unlawfully, the Panel does not find bad faith in the registration and use of the Domain Name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Dated: October 6, 2010

 

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