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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlackRock Index Services v. Syed Hussain, IBN7 Media Group

Case No. D2017-1523

1. The Parties

Complainant is BlackRock Index Services of New York, New York, United States of America ("United States"), represented by Day Pitney LLP, United States.

Respondent is Syed Hussain, IBN7 Media Group of Closter, New Jersey, United States.

2. The Domain Name and Registrar

The disputed domain name <corifunds.com> is registered with Name.com, Inc. d/b/a Name.com LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2017. On August 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 8, 2017.

The Center appointed Steven L. Snyder as the sole panelist in this matter on October 2, 2017. 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

Since June 2013, Complainant has used the CORI mark to promote Complainant's financial services and investment funds. In the past four years, Complainant has also obtained numerous registrations for the CORI mark in jurisdictions around the world. See, e.g., U.S. Registration No. 4,452,608. (registering CORI on December 17, 2013, in connection with financial services in International Classes 35 & 36).

On June 10, 2017, Respondent registered the disputed domain name, <corifunds.com>. The disputed domain name directed visitors to a website that displayed links to various financial services. At the bottom of the webpage was a notice that "[t]he domain corifunds.com may be for sale by its owner!" Clicking the link took the visitor to a webpage at "www.sedo.com". This webpage invited visitors to "[m]ake an offer on this domain."

5. Parties' Contentions

A. Complainant

Complainant describes its corporate family as being "the world's preeminent asset management firm and a premier provider of global investment management" and claims to have "assets over $ 5.1 trillion under management." In addition to that vast sum of money, Complainant states that it provides investment management and consulting services to clients with "portfolios totaling approximately $15 trillion." Based on these accomplishments, Complainant maintains that its service marks have become "synonymous with the highest quality of financial and investment services around the globe."

CORI is one of Complainant's service marks, which Complainant reportedly uses in connection with "retirement indexes and investment funds … designed to help measure retirement readiness and plan for future income goals." Complainant asserts it has "widely used and promoted the CORI trademark throughout the United States and internationally, and has established a worldwide reputation for the quality and success of its CORI funds and indexes."

Respondent claims Complainant, "has been regularly found by UDRP panels to have engaged in abusive domain registrations" and has suffered more than 20 adverse decisions, including one proceeding in which the Panel characterized Respondent as having "a long history of having engaged in abusive registration."

In line with his past behavior, Respondent allegedly "has once again engaged in abusive registration of a domain name by incorporating Complainant's registered CORI trademark into the Disputed Domain Name for the purposes of exploiting the <CORIFUNDS.COM> domain for Respondent's pecuniary benefit."

According to Complainant, each element of the Policy has been met.

First, Complainant argues that the disputed domain name is confusing similar to Complainant's CORI service mark. Complainant asserts that it has common law rights in this mark and has also obtained many registrations for the CORI service mark from the United States, the European Union, China and other jurisdictions. Inasmuch as the CORI marks are used in connection "with financial services and investment funds," consumers will be likely to be misled into believing that <corifunds.com> is associated with Complainant.

Second, Complainant argues that Respondent lacks any bona fide rights in the disputed domain name. On "information and belief," Complainant maintains that "Respondent (i) does not own any trademark or service mark registrations encompassing the Disputed Domain Name, nor any variations thereof (including for the mark CORI alone); (ii) is not commonly known by the Disputed Domain Name; and (iii) is not making a legitimate, noncommercial, or fair use of the Disputed Domain Name without intent for commercial gain." Regarding the latter point, Complainant notes that the disputed domain name is linked to a "webpage that displays links for third-party retirement investment fund services in direct competition with the services offered by Complainant under Complainant's Marks." Complainant maintains that Respondent is earning "revenue from sponsored advertising for commercial gain" and is also offering the disputed domain name for sale.

Third, Complainant argues that Respondent registered and used the disputed domain name in bad faith: "Respondent has registered and used the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to Complainant—or a third party—for valuable consideration in excess of the out-of-pocket costs directly related to purchase of the Disputed Domain Name. Such circumstances are evidence of bad faith use and registration by Respondent." The fact that Respondent registered a domain name that was confusingly similar to Complainant's CORI service mark is further evidence, argues Complainant, of Respondent's bad faith.

Complainant requests that the disputed domain name, <corifunds.com>, be transferred to its ownership.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Respondent Syed Hussain has frequently been named as a respondent in UDRP proceedings and is undoubtedly familiar with the following elements which a complainant must prove in order to succeed under the Policy:

"(i) The disputed domain name is identical or confusingly similar to a trade mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

See Yellow Corporation v. MIC, C/O Syed Hussain, WIPO Case No. D2003-0748.

A. Identical or Confusingly Similar

There are two questions that must be answered in the affirmative in order for Complainant to establish the first element under the Policy. First, does Complainant have rights in the CORI service mark? Second, is the disputed domain name, <corifunds.com>, confusingly similar to Complainant's CORI service mark?

Complainant has registered and used the CORI mark in many jurisdictions in connection with its investment funds. It has rights in the mark. The disputed domain name is <corifunds.com>, which is simply a combination of Respondent's mark and a service with which the mark is associated. The disputed domain name is confusingly similar to Complainant's mark.

See Red Hat, Inc. v. Syed Hussain, d/b/a CPIC Net and MIC, WIPO Case No. D2000-1442 ("There is no question that the domain names in dispute are confusingly similar to Complainant's RED HAT mark. The domain names incorporate, in full, Complainant's RED HAT mark. The addition to the disputed domain names of the generic term "ventures" and the top-level domains ".com"; ".org"; and ".net" is without legal significance.").

Complainant has established the first element under the Policy.

B. Rights or Legitimate Interests

From Closter, New Jersey, where Respondent Syed Hussain is purportedly based, to New York City, home of Complainant, is about a dozen miles. Surely, Respondent was aware of Complainant and its CORI‑branded funds when Respondent registered the disputed domain name, <corifunds.com>. He took this action without the knowledge or approval of Complainant. Indeed, there is no connection between Respondent and Complainant, except perhaps an affinity for money.

As Respondent has been warned on previous occasions, he gains no rights or interests in a domain name that simply consists of another party's mark and a word that describes the services or products with which the mark is commonly associated. See Compagnie Gervais Danone v. Domain Management, Syed Hussain, WIPO Case No. D2008-1239 ("if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name").

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

In the absence of any response by Respondent, Complainant has established the second element under the Policy.

C. Registered and Used in Bad Faith

Many years after Complainant started using the CORI mark in connection with its retirement funds, Respondent registered the disputed domain name, <corifunds.com>. As noted above, the disputed domain name is confusingly similar to a mark in which Complainant has rights and Respondent has exploited that confusion in order to make money.

In addition to the "click through" revenue Respondents likely earns from the website to which the disputed domain name is linked, Respondent apparently hopes to sell the disputed domain name for a price far in excess of the registration costs: The minimum purchase price is currently set at US D2,250. Under these circumstances, it is fair to say that Respondent has registered and used the disputed domain name in bad faith.

This conclusion is reinforced by the fact that Respondent has repeatedly been instructed by other UDRP panels that his modus operandi demonstrates bad faith registration and usage. See Telstra Corporation Limited v. MIC and Syed Hussain, WIPO Case No. D2002-0126 ("The Respondent specifically referred to requiring 'a little bit of a price' for transfer of the domain name…. he invited the Complainant to make a counter offer to the proposal of US$ 500. In these circumstances the Panel finds that the registration and use of the domain name by the Respondent has been and is in bad faith.")

Complainant has established the third element under 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, <corifunds.com>, be transferred to Complainant.

Steven L. Snyder
Sole Panelist
Date: October 16, 2017

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