WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thomas Blaige & Company, LLC v. Kevin F Ford

Case No. DCO2020-0074

1. The Parties

The Complainant is Thomas Blaige & Company, LLC, United States of America (“United States”), represented by Thompson Hine LLP, United States.

The Respondent is Kevin F Ford, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <blaige.co> (“Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 30, 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 November 2, 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 November 2, 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 November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2020.

The Center appointed John Swinson 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 Complainant is Thomas Blaige & Company, LLC, a company incorporated in the United States. According to the Complaint, the Complainant provides investment banking and financial advisory services to private equity investors, corporations, and privately-owned companies in the fields of plastics, packaging, and chemicals. The Complainant’s proprietary research department compiles and analyses over 500 plastics, packaging, and chemical industry transactions around the world on an annual basis. According to the Complaint, the Complainant has achieved widespread recognition from third parties as an industry leader, including recognition by Acquisition International, a magazine based in the United Kingdom, as Sector Focused Investment Bank of the Year in 2013, 2015, and 2017.

The Complainant asserts that it has common law trade mark rights in and to the name BLAIGE (the “Trade Mark”). The Complainant advertises its services via its website at <blaige.com>, which it registered on April 19, 2005.

The Panel conducted a Google search from Australia of the term “blaige” on December 21, 2020. The first ten results all related to the Complainant.

The Respondent is Kevin F Ford, an individual of United Kingdom. No response was received from the Respondent and therefore little information is known about the Respondent.

The Disputed Domain Name was registered on June 24, 2020. The Disputed Domain Name resolves to a parking page which states that “This domain name is parked FREE, courtesy of Hostinger.”

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant has established common law rights trade mark in and to the term BLAIGE through its widespread and exclusive use of the <blaige.com> domain name and the Trade Mark in connection with the Complainant’s offering of investment banking services.

The Respondent Registered the Disputed Domain Name 15 years after the Complainant registered its <blaige.com> domain name. The Disputed Domain Name is identical to the Trade Mark in which the Complainant has common law rights.

Rights or Legitimate Interests

The Complainant’s first use of the Trade Mark in connection with its business predates the Respondent’s registration of the Disputed Domain Name by 17 years.

There is no evidence that the Respondent has been commonly known the by the Disputed Domain Name or acquire trade mark or service mark rights in a name which corresponds to the Disputed Domain Name.

The Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. Rather, the Disputed Domain Name resolves to a parking page hosted by Hostinger. Using the Complainant’s Trade Mark to divert web traffic to a parking page that offers services unrelated to the Complainant is not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Disputed Domain Name.

The Respondent is using the Disputed Domain Name for fraudulent commercial gain in connection with illegal email spoofing and “phishing” attempts to redirect commercial wire transfers and to gain access to the Complainant’s bank accounts. Such use would result in theft, bank fraud and other criminal wrongdoing that will tarnish Complainant’s reputation.

The Respondent has no rights or legitimate interest in the Disputed Domain Name.

Registered and Used in Bad Faith

In June 2020, the Complainant was engaged in a private equity transaction that involved a substantial monetary payment upon closing. On June 24, 2020, the same day the Disputed Domain Name was registered, the party to the transaction responsible for wiring the closing funds received an email purporting to come from the Complainant’s Director of Business Development. The email advised the recipient to stop payment to the Complainant’s main account and instead wire the funds to an alternative account. The spoofed email was sent from an email address which used the Disputed Domain Name (i.e., […]@blaige.co). The spoofed email was detected before the funds were transferred.

On or around July 21, 2020, the Complainant learned that its bank had received a spoof email from another email address which used the Disputed Domain Name. The sender purported to be the Complainant’s CEO and sought to add a fictitious individual to the Complainant’s bank signature card by way of a forged attachment. The attempted fraud was detected by the bank and the Complainant.

The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Respondent registered and is using the Disputed Domain Name for the purpose of committing criminal activity and fraud and is thereby disrupting the business of the Complainant. Such use is not a bona fide offering of goods or services and demonstrates that the Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a response.

A. Procedural Issues

Failure to file a response

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

To establish unregistered or common law trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with that complainant’s goods and/or services (see section 1.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the Complainant has submitted that it has common law rights in the Trade Mark as a result of over 15 years of exclusive use in relation to investment banking and financial advisory services. The Complainant has provided evidence that it has received awards for its services. Based on the Complainant’s evidence and the Panel’s own Internet searches, the Panel considers that the Complainant has a sufficient reputation to demonstrate common law rights in the Trade Mark.

Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview 3.0). In this case, the Disputed Domain Name is identical to the Trade Mark.

The Complainant is successful on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law rights in relation to the Trade Mark.

- There is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the Disputed Domain Name resolved to a parking page hosted by Hostinger. The Complainant has also provided evidence demonstrating that the Disputed Domain Name has been used in connection with an attempted fraud that is similar to a phishing or fraudulent invoice scheme which employs the Disputed Domain Name in an attempt to imitate the Complainant and fraudulently obtain payments.

The Respondent had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

In light of the above, the Complainant is successful on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

In the Panel’s view, the Respondent registered the Disputed Domain Name with the Complainant in mind. The Complainant had used the Trade Mark for more than 15 years at the time the Respondent registered the Disputed Domain Name.

Further, if circumstances indicate that the respondent’s intent in registering the disputed domain name was to profit in some fashion from, or otherwise exploit, the complainant’s trade mark, panels will find bad faith on the part of the respondent (see section 3.1.1 of the WIPO Overview 3.0). The Respondent’s use of the Disputed Domain Name in connection with several attempts to fraudulently imitate the Complainant and thereby obtain payments to which it was not entitled indicates that the Respondent is attempting to exploit the Complainants’ Trade Mark. This constitutes bad faith registration and use for the purposes of the Policy.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of 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, <blaige.co> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: December 21, 2020