WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BlackRock Fund Advisors v. Citizen John
Case No. DCO2021-0038
1. The Parties
The Complainant is BlackRock Fund Advisors, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Citizen John, Australia.
2. The Domain Name and Registrar
The disputed domain name <isharesglobal.co> is registered with NETIM SARL (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2021, 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 June 2, 2021 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 June 4, 2021.
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 June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021.
The Center appointed Jon Lang as the sole panelist in this matter on July 7, 2021. 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 along with BlackRock, Inc. and all their related subsidiaries and affiliates (hereafter “BlackRock”), comprise one of the world’s largest financial asset management firms and is a premier provider of global investment management, financial risk management, and financial advisory services to institutional, intermediary and individual investors around the world. With assets of over USD 9 trillion under management, BlackRock manages a broad range of investment portfolios on behalf of governments, corporations and individuals worldwide.
The Complainant is the registered owner of the following trademarks in Australia, Hong Kong, China, and the United States, covering a variety of financial services:
iSHARES (United States trademark, Reg. No. 6,176,829) registered on October 13, 2020
iSHARES (United States trademark, Reg. No. 3,111,466) registered on July 4, 2006
iSHARES (United States trademark, Reg. No. 2,422,249) registered on January 16, 2001
iSHARES (United States trademark, Reg. No. 5,146,723) registered on February 21, 2017
iSHARES (Hong Kong Reg. No. 304878974) registered on April 2, 2019
iSHARES (Hong Kong Reg. No. 300915741) registered on July 19, 2007
iSHARES (Australia Reg. No. 1999955) registered from April 1, 2019
iSHARES (Australia Reg. No. 804749) registered from August 23, 1999
It also owns registrations for the iSHARES trademark in several other territories and jurisdictions. The Complainant has widely used and promoted the iSHARES trademark throughout the United States and internationally. BLACKROCK is also a trademark of the Complainant.
The Complainant has a website is at <ishares.com>.
The disputed domain name (the Domain Name) was registered on March 9, 2021. On March 31, 2021, the Complainant became aware that the Domain Name was being used to impersonate representatives of BlackRock and perpetrate an email scam through the associated “[...]@isharesglobal.co” email account. Targeted victims of the scam all report that they were first contacted on LinkedIn by an individual named Robert Kenrick, who claimed to be Senior Vice President at BlackRock in Hong Kong. There is no Vice President or any other employee at BlackRock named Robert Kenrick.
The individual purporting to be Robert Kenrick claimed that BlackRock was soliciting applications from companies impacted by the COVID-19 pandemic for low-interest financing of select projects. After expressing interest in the investments, the targeted victims were contacted via email from “[...]@isharesglobal.co” with a series of forged loan applications and documents making unauthorized use of the BLACKROCK and iSHARES trademarks.
As at the date of the Complaint, the Complainant has been made aware of at least six forged documents being distributed by the “[...]@isharesglobal.co” email address that makes unauthorized use of the BLACKROCK and iSHARES marks to obtain banking and other sensitive information under the false pretence of being a BlackRock backed investment. The forged documents include the names and signature lines of actual current and former BlackRock employees, including the actual Vice Chairman of BlackRock. The fact that the forged documents make false reference to the actual Vice Chairman of BlackRock, on behalf of “BlackRock Hong Kong Ltd.,” is telling given that in BlackRock, Inc. v. Wu Jin, wutech rsl, Sekir Lui, and Janpi Suree, brur sinq sarl, WIPO Case No. D2021-0597, the Complainant was recently granted a transfer of the domain names <blackrockhks.com>, <blackrockhks.online>, and <blackrock-hks.com> on the basis that each was being used to run a fraudulent email phishing scam impersonating the Vice Chairman of BlackRock. Given the timing and similar patterns, the Complainant believes that those responsible for the “blackrockhks” email scams are involved, if not wholly responsible, for the email scam being perpetrated using the Domain Name.
To further add legitimacy to the “[...]@isharesglobal.co” email address, the Domain Name previously resolved to the Complainant’s official website at “www.blackrock.com” but as a result of the Complainant’s enforcement actions, it no longer does so (nor resolves to any other active web content).
5. Parties’ Contentions
The following is a summary of the main assertions of the Complainant.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
By virtue of the Complainant’s trademark registrations, it satisfies the requirement of having trademark rights under paragraph 4(a) of the Policy and paragraph 3(b)(ix) of the Rules.
The Complainant’s trademarks afford the Complainant the exclusive right to use the iSHARES name and mark in association with financial services throughout Australia, Hong Kong, China, and the United States, and other parts of the globe, as well as the right to prevent others from using the same or similar marks in a way that is likely to cause confusion among consumers.
The Complainant’s trademarks have been used in connection with promotion of the Complainant’s financial and investment funds since at least as early as May 2000.
The Domain Name is confusingly similar to the Complainant’s iSHARES trademark. It incorporates the Complainant’s distinctive trademark in its entirety alongside the generic term “global” and the “.co” country code Top-Level Domain (“ccTLD”). The inclusion of the generic term “global” does nothing to distinguish the Domain Name from the Complainant’s trademarks and, if anything, increases the likelihood of confusion given that the term “global” describes the globally available nature of the Complainant’s iSHARES branded funds. Further, the suffix “.co” fails to serve as a distinguishing feature, and should be disregarded.
The use of a domain name that is nearly identical in overall appearance to a long-standing registered domain name owned by BlackRock is evidence of the Respondent’s intention to target and exploit the Complainant’s trademark. Moreover, impersonation of multiple BlackRock employees, including BlackRock’s Vice Chairman, and provision of fraudulent forms bearing the Complainant’s stylized trademarks and addresses, clearly shows that the Respondent possessed a deep knowledge of the Complainant and its activities when registering the Domain Name.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent is unable to provide evidence sufficiently establishing a right or legitimate interest: (i) the Respondent has not made any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the iSHARES name, and has not been commonly known by the Domain Name; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
The Respondent’s unauthorized use of the iSHARES trademark in furtherance of a fraudulent scheme indicates that the Respondent has no intention of using the Domain Name to offer legitimate services, but rather that the Domain Name was registered with the intention of causing confusion with the Complainant for pecuniary gain under the false pretences of procuring low-interest financing.
The Respondent is making infringing use of the Complainant’s iSHARES trademark as part of a fraudulent email scam targeting innocent third-parties.
The Respondent is not commonly known by the name iSHARES or iSHARES GLOBAL. The Complainant has no relationship with the Respondent and there is nothing to suggest that the Respondent has ever made use of the name iSHARES or iSHARES GLOBAL other than in connection with the registration and fraudulent use of the Domain Name.
There is no evidence to suggest that Respondent owns any trademark or service mark registration for iSHARES or iSHARES GLOBAL, nor any variation thereof.
The Respondent does not have license, permission or authorization from the Complainant to use the Complainant’s trademarks.
Moreover, the Complainant has prior rights in its trademark which precede the Respondent’s registration of the Domain Name by nearly twenty years.
The Respondent’s registration and use of the Domain Name cannot be considered “fair use” as it falsely suggests affiliation with the Complainant and its trademark.
The Domain Name incorporating, as it does, the Complainant’s iSHARES trademark, adding only the term “global”, cannot be reasonably used for any non-infringing “fair use” that would grant the Respondent a right or legitimate interest.
The Domain Name was registered and is being used in bad faith
The Respondent registered and is using the Domain Name to intentionally attempt to defraud, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Domain Name.
The composition of the Domain Name alone evidences the Respondent’s bad faith at the time of registration as there is no conceivable non-infringing use of a domain name solely comprised of the Complainant’s iSHARES trademark and the generic term “global”, (indicating the offering of services across the globe).
Further evidence of bad faith is apparent given the clear resemblance of the Domain Name to <isharesglobal.com>, which the Complainant has owned since as early as 2018 after being awarded its transfer in a UDRP decision finding bad faith registration and confusing similarity with the Complainant’s iSHARES trademark (BlackRock, Inc. v. Syed Hussain, Domain Management MIC, WIPO Case No. D2018-1358).
The Respondent’s bad faith intention to register and use the Domain Name to cause and exploit confusion with the Complainant is confirmed by the Respondent’s infringing, impersonating and fraudulent use of the Complainant’s trademarks. Such blatant and egregious infringement of the Complainant’s intellectual property rights demonstrates that the Respondent knew and targeted the Complainant when registering the Domain Name.
By exploiting the confusion with the Complainant caused by the composition of the Domain Name, the Respondent has intentionally attempted to defraud Internet users for the purposes of obtaining financial payment under the false pretences of providing low-interest financing. The nature of the Respondent’s use of the Domain Name is manifest evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the iSHARES trademark. Ignoring the ccTLD “.co” (as the Panel may do for comparison purposes), the Domain Name comprises the iSHARES trademark followed by the word “global”. As the iSHARES trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a
side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The iSHARES trademark is incorporated in its entirety and clearly recognizable within the Domain Name. The addition of the word “global” does not prevent a finding of confusing similarity between the Domain Name and the iSHARES trademark, which is the dominant element. The addition of common, dictionary, descriptive or negative terms does not usually prevent a finding of confusing similarity and here the addition of the word “global” certainly does not do so.
The Panel finds that the Domain Name is confusingly similar to the iSHARES trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial 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. Here, however, there is no evidence showing that the Respondent is known by the Domain Name. More significantly, there can be nothing legitimate, non-commercial or fair about the use to which the Domain Name has been put i.e., using the associated “[...]@isharesglobal.co” email address to create the impression that emails from that account are in fact from the Complainant so as to perpetrate an email scam designed to obtain personal information from Internet users and presumably thereafter defraud them. Clearly such use is misleading and may well harm the Complainant and lead to tarnishment of its iSHARES trademark.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. There can be nothing bona fide about the use to which the Domain Name has been put.
The Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name (provided that the respondent has engaged in a pattern of such conduct). A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
A complainant however does not have to demonstrate a precise literal application of one of the paragraph 4(b) scenarios. They are non-exclusive and illustrative only, and as long as there is evidence demonstrating that a respondent is seeking to take unfair advantage of, or to abuse a complainant’s trademark, such behaviour would satisfy the general principle underlying the bad faith requirement of the Policy.
The “[...]@isharesglobal.co” email account has been used to distribute forged documents which make unauthorized use of the BLACKROCK and iSHARES trademarks for the purposes of obtaining banking and other sensitive information. Such documents include the names and signature lines of actual current and former BlackRock employees. It is clear that the Respondent has set out to acquire a domain name to assist it in its impersonation of the Complainant for its own improper ends.
In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <isharesglobal.co> be transferred to the Complainant.
Date: July 13, 2021