WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BlackRock, Inc. v. Sheng Zhang
Case No. D2014-1327
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 Sheng Zhang of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <blackrockzg.com> (the “Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2014, 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. On August 12, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On the same date, the Complainant filed an amendment to the Complaint confirming its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 in both English and Chinese, and the proceedings commenced on August 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on September 22, 2014. 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 subsidiaries (“BlackRock”) is a premier provider of global financial and investment management services under the trade mark BLACKROCK in North and South America, Europe, Asia, Australia, the Middle East and Africa. Founded in 1988, BlackRock has more than 60 offices in over 30 countries around the world. As at August 4, 2014, BlackRock’s assets under management exceed USD 4.3 trillion. The BLACKROCK trade mark is registered in many countries all over the world including the United States of America, China and Hong Kong, China, in relation to a broad spectrum of financial and investment services. The registrations in China and Hong Kong, China, include BLACKROCK in Chinese characters 貝萊德 (individually or together the “BLACKROCK Trade Marks”).
BlackRock also owns a number of domain names through which it operates its websites. These include <blackrock.com>, <blackrock.com.cn>, <blackrock.com.hk>, <blackrock.ch> and <blackrock.fr>.
The Respondent registered the Domain Name on June 25, 2014. The website connected to the Domain Name (the “Website”) bears the BLACKROCK Trade Marks in the form they appear on the Complainant’s Chinese website. The Website also contains an image from the Complainant’s website. The Website is likely to have been established to phish for financial information from Internet users.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the BLACKROCK Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent 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 Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in its amendment to the Complaint of August 12, 2014 that the language of the proceeding should be English. The Complainant contends that the Respondent is using an English language trade mark prominently on the website connected to the Domain Name, the Domain Name itself is in English, the Respondent is posing as an American headquartered company that predominantly does business in English, and the Respondent has identified an English trade mark to scam and defraud customers, hence indicating that it is familiar with the English language.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the trade mark BLACKROCK through extensive use and registrations that pre date the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Domain Name integrates the Complainant’s registered trade mark BLACKROCK, the letters “zg” and the generic Top-Level Domain (“gTLD”) “.com” suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the letters “zg” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the BLACKROCK trade mark in the Domain Name.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that it has not authorised the Respondent to use the BLACKROCK Trade Marks in the Domain Name or any other manner. The Respondent does not own any trade marks encompassing the Domain Name neither is it known by the Domain Name. Further, there is no evidence of legitimate noncommercial fair use.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s BLACKROCK Trade Marks when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
With respect to the use of the Domain Name, the Panel observes that the Respondent in using on the Website the Complainant’s trade marks and images. With the Complainant being one of the world’s leading financial asset management companies, it would appear that the Respondent has set up the website connected to the Domain Name to defraud or phish for personal information showing a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website is authorised or endorsed by the Complainant. In addition, the Panel finds on the balance of probabilities that the WhoIs information for the Respondent is false indicating a clear intention to conceal its identity. The fact that the Complainant has a well known trade mark, the Respondent failed to file a response and then failed to provide proper contact information is clearly bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also concludes that the actual use of the Domain Name was in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <blackrockzg.com> be transferred to the Complainant.
Date: October 9, 2014