WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BlackRock, Inc. and BlackRock International Limited v. Besim Huskic
Case No. D2020-2596
1. The Parties
The Complainants are BlackRock, Inc., United States of America (“United States”) (the “First Complainant”), and BlackRock International Limited, United States (the “Second Complainant”), represented by Simmons & Simmons, United Kingdom.
The Respondent is Besim Huskic, Bosnia and Herzegovina.
2. The Domain Name and Registrar
The disputed domain name <blackrockukmanagement.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 October 15, 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 October 19, 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 October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 16, 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 Complainants and their affiliated companies form the BlackRock group, established in 1988. They are financial asset management firms, providing investment funds and advisory services to governments, corporations and individual clients around the world. The BlackRock group has assets of over USD 7 trillion under management and clients in over 100 countries around the world.
The First Complainant is the owner of the following trademark registrations of the sign BLACKROCK:
- the trademark BLACKROCK with registration No. UK00002466809, registered in the United Kingdom on April 4, 2008 for services in International Classes 35 and 36; and
- the European Union trade mark BLACKROCK with registration No. 006277818, registered on August 29, 2008 for services in International Classes 35 and 36.
The Second Complainant is the owner of the following trademark registrations of the sign BLACKROCK:
- the trademark BLACKROCK with registration No. UK00002177996, registered in the United Kingdom on February 12, 1999 for services in International Class 36; and
- the European Union trade mark BLACKROCK with registration No. 000942375, registered on February 28, 2000 for services in International Class 36.
The trademark registrations specified above are jointly referred to in this decision as the “BLACKROCK trademark”.
The disputed domain name was registered on April 24, 2020. It is currently inactive. As of May 28, 2020, it resolved to a website with the title “BlackRock UK Management” covering business and financial topics.
5. Parties’ Contentions
The Complainants submit that the disputed domain name is confusingly similar to the BLACKROCK trademark, as it contains the entirety of the trademark as its dominant and only distinctive element, while its “uk” and “management” elements are descriptive of a geographical location and of a type of services, particularly in the financial services sector in which the Complainants operate. The Complainants add that the disputed domain name is highly similar to the name of the company BlackRock Investment Management (UK) Limited, which adopted this name in 2006 and operates the head office of the BlackRock group in the United Kingdom.
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Complainants have no relationship with the Respondent and they have not given it permission to use the BLACKROCK trademark, which was registered many years prior to the registration of the disputed domain name.
The Complainants state that the Respondent’s adoption of the disputed domain name was intended to benefit from the goodwill of the BLACKROCK trademark, by impersonating the Complainants in order to divert unsuspecting consumers to the Respondent or associated parties. The Respondent and other parties associated to it used the disputed domain name together with the domain names <blackrockinvestment.co.uk> and <bgffund.co.uk> and a company that was incorporated in the United Kingdom under the name BlackRock UK Management Limited as part of an elaborate scam in which they purported to provide and offered to provide financial services under the signs BLACKROCK and BLACKROCK UK MANAGEMENT in an attempt to impersonate the Complainants and defraud money from unsuspecting consumers. The disputed domain name originally resolved to a website that offered to provide financial services under the name BlackRock and promoted a so-called “BlackRock UK Management China TechFund” with a “Minimum investment £5,000”. The website displayed the company name BlackRock UK Management with an address in London, which company was registered as Blackrock UK Management Limited on April 21, 2020 and was re-named Private Equities LTD on June 29, 2020 following correspondence from the Complainants. The Complainants note that the sole director of, and holder of 96 per cent of the shares in this company is Mr. Ravinder Singh Dhillon. In his correspondence with the Complainants, Mr. Dhillon stated that the company name had been changed and that “The website is also down”. Based on Mr. Dhillon’s control and use of the disputed domain name, and in view of the Respondent’s background in information technology and services, the Complainant believes that the Respondent either registered the disputed domain name at the request of Mr. Dhillon or the entity formerly known as BlackRock UK Management Limited, or registered the disputed domain name acting in concert with Mr. Dhillon or with the entity formerly known as BlackRock UK Management.
The Complainants also submit that the Respondent and parties associated to it offered to provide financial and related services under the sign BlackRock UK Management in emails sent from email addresses at the domain names <blackrockinvestment.co.uk> and <bgffund.co.uk>, whose registrants are Rav Dhillon and the Respondent, respectively. One of these emails stated that the “BlackRock UK Management team has been established to offer personal support to all UK based investors looking to grow their portfolio” and offered to provide “subscribers with EXCLUSIVE access to products available through BlackRock UK Management” and invited investors to complete account documentation. The Complainants note that the name BGF, which forms part of the domain name <bgffund.co.uk>, is used by the Complainants in relation to their BlackRock Global Funds.
The Complainants further state that the Respondent and parties associated to it also distributed a “UK Investor Guide 2020” under the sign BlackRock UK Management. This document described BlackRock UK Management as “the UK’s leading financial advisory service”, invited readers to “Start your investment journey with BlackRock UK Management today!”, and stated that “BlackRock has helped people from the UK take control of their financial security for more than 20 years”. The document indicated the Complainants’ own website addresses “www.blackrock.com/corporate” and “www.blackrock.com”, but was signed by “Rav Singh” – a diminutive form of Ravinder Singh Dhillon. The contact address given in the “UK Investor Guide 2020” was the address given on the website to which the disputed domain name resolved. According to the Complainants, neither the Respondent, nor Mr. Ravinder Singh Dhillon or his company Private Equities Ltd, are authorized by the UK Financial Conduct Authority (“FCA”), despite having offered or purported to offer financial services to potential customers in the United Kingdom.
The Complainants contend that the Respondent registered and used the disputed domain name in bad faith. It intentionally registered and used the disputed domain name incorporating the BLACKROCK trademark in order to exploit Internet-user confusion with the BLACKROCK trademark to attract consumers seeking services provided by the Complainants under this trademark to the website operated by the Respondent and its associates. Given the nature of the Respondent’s use of the disputed domain name as part of a financial services scam described above, such confusion could lead to substantial damage through loss of consumers and injury to the reputation of the Complainants.
The Complainants request the transfer of the disputed domain name to the First Complainant Blackrock, Inc.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met by the Complainants to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
The Respondent has however submitted no Response and has not disputed the Complainants’ contentions and evidence in this proceeding.
A. Identical or Confusingly Similar
The Complainants have submitted sufficient evidence to demonstrate their registered rights in the BLACKROCK trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The relevant part of the disputed domain name consists of the BLACKROCK trademark as its dominant element, followed by the acronym “uk” and the dictionary word “management”. These additional elements in the disputed domain name do not affect the confusing similarity between the BLACKROCK trademark and the disputed domain name. It has already been held by previous UDRP panels that the addition of descriptive or geographical terms would not prevent a finding of confusing similarity between a domain name and a trademark where the trademark is clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview 3.0.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the BLACKROCK trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, stating that they have no relationship with the Respondent and have not authorized it to use the BLACKROCK trademark, and that the Respondent’s adoption of the disputed domain name was intended to benefit from the goodwill of the BLACKROCK trademark by impersonating the Complainants in order to divert unsuspecting consumers to the Respondent or associated parties. The Complainants explain that the Respondent has set up an elaborate scheme, using the disputed domain name for a website offering the financial services of a company whose name is confusingly similar to the Complainants’ affiliate in the United Kingdom and containing statements that may mislead visitors into believing that the website is affiliated to the Complainants and induce them to make investments, and has sent emails to third parties with misleading offers of financial services by the same company. The Complainants have thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not disputed the Complainants’ statements and the evidence submitted by them. It has not provided any plausible explanation of its actions. In his communications with the Complainants prior to the dispute, Mr. Dhillon has stated that the name of his company has been changed and that the website at the disputed domain name will be deactivated. His statement confirms that the Respondent and Mr. Dhillon are acting in concert – a conclusion that can also be made on the basis of the content of the website at the disputed domain name. The evidence submitted by the Complainants shows that this website has offered financial services by a company in the United Kingdom whose owner and director is Mr. Dhillon, and whose name is very similar to the name of the Complainants’ affiliate there, and that emails and brochures have been distributed that offer financial services by the same company. The evidence also shows that the name of this company has been changed following the receipt of correspondence from the Complainants. As submitted by the Complainants, it appears that the Respondent has registered and used the disputed domain name acting in concert with Mr. Dhillon to impersonate the Complainants and mislead Internet users that the company advertised on the website at the disputed domain name is affiliated to the Complainants.
On the basis of the above, the Panel finds that the Complainants’ prima facie case has remained unrebutted, and that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, the disputed domain name is confusingly similar to the Complainants’ BLACKROCK trademark and to the name of the Complainants’ affiliate in the United Kingdom, and is being used to offer financial services (claimed to be a scam) that compete with the services of the Complainants by a company whose name is also confusingly similar to the name of the same affiliate of the Complainants. The Respondent’s website contains no disclaimer of the lack of relationship between the Parties and of the lack of endorsement of the website by the Complainants. The financial services the company featured on the Respondent’s website have also been advertised to third parties through emails associated to other domain names registered by the Respondent or Mr. Dhillon.
In view of the above, the Panel finds as more likely than not that the Respondent was aware of the Complainants and of the BLACKROCK trademark when registering the disputed domain name, and that by registering and using it in concert with Mr. Dhillon, the Respondent has engaged in an attempt to pass himself off as the Complainants to induce the Complainants’ current and potential customers into actions for the Respondent’s and Mr. Dhillon’s own commercial benefit. The Respondent has therefore registered and used the disputed domain name 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 disputed domain name <blackrockukmanagement.com> be transferred to the Complainants.
Date: January 2, 2021