legal Blackrock, Inc. v. BALCKROCK.COM et al

[bhartzer]

This is an interesting case, especially because it was a lawsuit filed in the Eastern District of Virginia against 40 domain name owners.

In September 2022, Blackrock, Inc. filed a lawsuit against the owner of balckrock dot com for trademark infringement. They also included 40 other domain names as well:

BALCKROCK.COM, BLACKROCKINVESTMENTS.COM, BLACKROCKINVESTORS.COM, BLACKROCKBANK.COM, BLACKROCKFINANCIALCORP.COM, BLACKROCKMONEY.COM, BLACKROCKEQUITYPARTNER.COM, BLACKROCKFUNDING.COM, BLACKROCKHOLDINGINVESTMENTS.COM, BLACKROCKBANKS.COM, BLACKROCKTRADELLP.COM, BLACKROCK-PSA.COM, BLACKROCK-INVESTMENT.COM, BLACKROCKBITCOIN.COM, BLACKROCKUKINVESTMENT.COM, BLACKROCKCAPITALSOLUTIONSLLC.COM, BLOCKROCKCAPITAL.COM, BLACKROCK-FUND.COM, BLACKROCKCRYPTOBANK.COM, BLACKROCKBROKER.COM, BLACKROCKBROKERAGEFIRM.COM, BLACROCK.NET, MYBLACKROCKISHARES.COM, BLACK-ROCK-INVEST.COM, BLACKROCKINVESTMENTSGROUP.COM, BLACKSOCK-INVEST.COM, FUNDBLACKROCK.COM, BLACKROCKFINANCIALADVISERS.COM, BLACKROCKFINANCIALADVISORS.COM, BLACKROCKLOAN.COM, BLACKROCK-STOCK.COM, BLACKROCKE.COM, BLACKROCKDIGITALASSETS.COM, BLACKROCKINVEST.ORG, BLACKRPCK.COM, BLACKROCK-INVEST.COM, BLACKROK.COM, BLACKROCKGLOBALINVESTMENT.COM and BLACKROCKVESTMENT.COM

https://dockets.justia.com/docket/virginia/vaedce/1:2022cv01002/528315

Rather than filing a UDRP, they chose to file a lawsuit in Virginia. Blackrock, Inc. won the case, and it was finalized by the judge in December 2022.

What's interesting to me here is that GoDaddy, the registrar where at least 1 of the domain names were registered, at NO time during the lawsuit (when they were told to lock the domains), nor when the domains were moved out of the domain owner's account, did GoDaddy notify the domain owners.

I know one of the owners of the domains, and they were actually using it for a website that had nothing to do with finance, investment, etc. so it's quite possible that if they had known about the lawsuit they could have tried to defend the ownership of the domain.

The UDRP process notifies domain owners about the UDRP and gives them a chance to respond. However, if a lawsuit is filed, then domain owners are not notified at all. In this case, the domain owner went to renew the domain and found it was no longer in his GoDaddy account, so they came to me (through DNAccess' domain recovery service) and asked if I could find out what happened.

So what are domain owners to do? We're not notified when a lawsuit is filed, especially if the domain is at GoDaddy and it's locked.

 

[bhartzer]

This is a discussion that has morphed into something beyond the intent of the OP.

That said, we need industry leaders like you to recognize the wrongs of registrars like Godaddy and try to right them. Easier said than done for sure and your feedback is invaluable to the domain community. Thank you!

Actually, one of my original points of this thread is that a domain registrant was sued and they never received the communication that was supposedly sent by the Plaintiff's attorneys in this case.

If I'm ever sued over a domain name, I'd like to actually know about it.

 

[Keith]

Actually, one of my original points of this thread is that a domain registrant was sued and they never received the communication that was supposedly sent by the Plaintiff's attorneys in this case.

If I'm ever sued over a domain name, I'd like to actually know about it.

Those are 2 different types of communication.

1 is how godaddy decides to filter customers access to each other.

2 is godaddy communicating directly to registrants in the case of inquiries or legalities.

 

[branding]

When you're in your account and you have domain privacy enabled GD states they will show yourdomain.com@domainsbyproxy. com in whois.

In fact, they don't. They show the contact URL.

Not sure why but it's strange. It might be different if you pay them for whois privacy (I think they still charge for it) as my details are probably redacted to be in compliance with GDRP.

 

[branding]

I have disabled whois privacy, yet they don't show my email in whois. They show all personal info but still direct you to their form where I'd expect them to display my email.

 

[Peter45]

Actually, one of my original points of this thread is that a domain registrant was sued and they never received the communication that was supposedly sent by the Plaintiff's attorneys in this case.

If I'm ever sued over a domain name, I'd like to actually know about it.

I agree, the right to defend oneself or to defend one's interests in legal proceedings is one of the basic principles of our legal system.

As I understand it, in this case the only penalty for the registrar was to lose the domain.
The flaw you are pointing to would have been substantially more eclatant if there had been a financial penalty involved.
Actually - I'm just guessing - a financial penalty wouldn't even be possible without notifying the registrar.

Also interesting that even if there were a website attached to that TM infringing domain, channeling traffic i.e. Blackrock potential customers away from them, they sued the registrant but - if I understand it correctly - didn't go for financial reparations.

 

[Bob Hawkes]

It seem's bizarre a court action could complete without the holder of one of the items in question not informed when the registrar has contact information. Thanks for raising this here, @bhartzer.

On a broader level, I wonder if this will set some precedent and those who feel wronged will instead of starting individual UDRP with a number of owners, will instead do a court action through the registry, as perhaps a simpler and cheaper and maybe more foolproof way to accomplish transfer. It would set a dangerous precedent for domain owners, however. Has this approach been used much in the past?

I also wonder if the proposed changes in the ICANN-Verisign agreement for .net would not make the process even easier, cheaper and faster to do this way, at peril to those with legitimate defences on their names. See this discussion started by @GeorgeK.

Lots to think about.

-Bob

 

[satsdifference.com]

since I started domaining, in 1999, this disgusts me - typos are not USPTO national marks, but WIPO acts like they all are?? im wondering about worst case scenario domain is forcibly transferred like what happened to me, w' wwwbloombergradio.com by google domains moved to bloomberg at no cost to me

saving grace, so could it be seen as a settlement $, it WAS available, private eqiity acquisition ??!

-Dennis Zabala

 

[jberryhill]

like what happened to me, w' wwwbloombergradio.com

Gosh, it's hard to imagine why anyone would object to that.

 

[cooljub]

And then some folks pay the $69 to have a representative contact the owner that godaddy blocked you from

That's more or less the point, yeah.

From a few years ago..
Major Change is Coming to Public Whois Information at GoDaddy

I suppose you could pay for the Domain Buy Service at GoDaddy

I'm wondering if this might be the objective here?

 

[jberryhill]

Has this approach been used much in the past?

Yeah, it's been used for years. Click on this and tell me if you think it is "much":

https://www.courtlistener.com/?type=r&q=.com&type=r&order_by=score desc&court=vaed

And that is limited to cases filed in the E.D. Va. where the Verisign .com registry is located.

This was part of the cybersquatting law that was implemented in the US in 1999 around the same time that ICANN developed the UDRP:

https://www.law.cornell.edu/uscode/text/15/1125

(2)
(A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if—

(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and

(ii) the court finds that the owner—

(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or

(II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by—

(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and

(bb) publishing notice of the action as the court may direct promptly after filing the action.

(B) The actions under subparagraph (A)(ii) shall constitute service of process.

(C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which—

(i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or

(ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.

(D)
(i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court under this paragraph, the domain name registrar, domain name registry, or other domain name authority shall—

(I) expeditiously deposit with the court documents sufficient to establish the court’s control and authority regarding the disposition of the registration and use of the domain name to the court; and

(II) not transfer, suspend, or otherwise modify the domain name during the pendency of the action, except upon order of the court.

(ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.

----------------------

So, the option of filing an in rem suit against the domain name in the judicial district where Verisign is located has been around a long time, and is regularly used.

I mean, that's one of the things that has been going on for years with suits filed in Virginia to recover stolen domain names. This is one of the laws that's been regularly used to do that.

An "in rem" suit is a form of suit which is undertaken against a "thing" instead of a person. It was specifically designed to go after names registered to persons who cannot be found and over whom jurisdiction cannot be obtained. It assumes that WHOIS information is available (see the stuff highlighted in red), but the court regularly grants motions by plaintiffs in these things to use alternate forms of service.

 

[Bob Hawkes]

Click on this and tell me if you think it is "much"

Naw, just more than 8000 cases, not 'much'

Wow I had no idea. Thank you for all the detailed information @jberryhill

-Bob

 

[jberryhill]

(editing error)

 

[jberryhill]

Naw, just more than 8000 cases, not 'much'

I don't know how many of those are duplicates or not relevant... it's just a search for ".com" in EDVA cases. There are some other ACPA cases in which hundreds of domain names are dealt with in one shot. That's particularly convenient where the domains are being used in the same network, like the huge number of "shop" or "sale" domain names which are currently around 10% of the WIPO caseload and which use an identical ecommerce template to set up fake online stores.

I really don't get the point of the 'blackrok.com' domain name that is the subject of this thread. I'm still intrigued by this part:

I know one of the owners of the domains, and they were actually using it for a website that had nothing to do with finance, investment, etc.

Instead of explaining what it "had nothing to do with", why not explain what the alleged website was about?

Was it for Africans in South Korea or Kosovo?

 

[bhartzer]

Instead of explaining what it "had nothing to do with", why not explain what the alleged website was about?

Was it for Africans in South Korea or Kosovo?

In the case of blackrok, it is my understanding that its sole purpose was that it was part of a PBN. That's all. It was merely there to get indexed by search engines and provide links to other websites in the link network.

 

[jberryhill]

In the case of blackrok, it is my understanding that its sole purpose was that it was part of a PBN. That's all. It was merely there to get indexed by search engines and provide links to other websites in the link network.

I'm not much of an SEO expert, so I'd really appreciate it if you can break this down for me.

My understanding of what you are saying is that the domain name was registered to attract traffic and link to other sites in the private blog network in order to boost the ranking of the sites to which it, and other sites, are linked. This occurs due to the presence of what crawlers will detect as backlinks to the site(s) to be boosted.

It is also my understanding that this works if the names in question have organic traffic in the first place. As described here....

https://ahrefs.com/seo/glossary/private-blog-network

Very low organic traffic of the referring domain can indicate the website was only created to link out to other websites.

So, first, could you confirm that thumbnail description concerning PBN's is, to some degree, accurate?

And, if so, then I am curious to know why, for example, one would expect a name like "blackrok.com" to generate organic traffic in the first place. What would be a reason for that?

And, secondly, if the purpose of the name was to increase SEO relevance of other sites, on what basis are you saying that, ultimately, none of those other sites had anything to do with financial services? Isn't that a high-return subject?

Maybe I don't fully understand, but I can come up with a pretty good reason why "blackrok.com" might generate a fair amount of organic traffic, and I'm pretty sure that anyone with an IQ above room temperature can do so as well.

 

[Future Sensors]

I know one of the owners of the domains, and they were actually using it for a website that had nothing to do with finance, investment, etc.

What was the domain they were using?

 

[jberryhill]

What was the domain they were using?

Blackrok.com - it's noted above.

 

[Keith]

Blackrok.com - it's noted above.

The weird thing is that it is now under the control of blackrock.com but listed for $2150 buy it now.

We will assume it was the previous registrant who listed it for sale. In that case, they never had good intentions imo.

 

[Future Sensors]

The weird thing is that it is now under the control of blackrock.com but listed for $2150 buy it now.

It's now delegated to Blackrock.com nameservers, but no A record is present*. Some marketplaces may have the domain(s) still listed.

*probably the zone is not configured at all; nameserver not authoritative.

 

[bhartzer]

The weird thing is that it is now under the control of blackrock.com but listed for $2150 buy it now.

We will assume it was the previous registrant who listed it for sale. In that case, they never had good intentions imo.

My understanding is that the blackrok domain was used as part of a PBN (link network).

 

[jberryhill]

was used as part of a PBN (link network).

Could you elaborate on what that means, specifically, and the basis for stating that the use had nothing to do with financial services?

Are you saying that there was nothing else in the network related to financial services? Or are you saying that using the name as part of a PBN which might include financial services does not, in your mind, have any implications relative to the trademark?

I'm genuinely curious about the assertion that the domain name had nothing to do with the trademark, but have seen no facts that establish that assertion.

 

[Keith]

Could you elaborate on what that means, specifically, and the basis for stating that the use had nothing to do with financial services?

Are you saying that there was nothing else in the network related to financial services? Or are you saying that using the name as part of a PBN which might include financial services does not, in your mind, have any implications relative to the trademark?

I'm genuinely curious about the assertion that the domain name had nothing to do with the trademark, but have seen no facts that establish that assertion.

At the point they listed it for $2.150 that said it all. Blackrock certainly didn’t list it so it was an attempt by the previous registrant to get a few bucks.

 

[bhartzer]

Could you elaborate on what that means, specifically, and the basis for stating that the use had nothing to do with financial services?

Are you saying that there was nothing else in the network related to financial services? Or are you saying that using the name as part of a PBN which might include financial services does not, in your mind, have any implications relative to the trademark?

I'm genuinely curious about the assertion that the domain name had nothing to do with the trademark, but have seen no facts that establish that assertion.

I can't speak about the intent and why the site contained financial related content. But I can tell you about PBNs.
Back when this domain was registered, 2002, the "black hat SEOs" would buy a ton of domains (let's say 500 domains) and put up auto-generated content on those sites. Could be from feeds such as RSS feeds, scraping content, whatever. They then would link those 500 sites together, creating a PBN (private blog network). They'd usually have some way to easily control the links and the anchor text of the links.

So the content itself wasn't really important at all, as long at it would get crawled and indexed by the search engines so they could recognize the links. Who cares about the content as long as the links are there.

Back from 2002-2016 or so, the content/topic of the site didn't matter as long as the link was there in the content or on the site. But now in the past 5 years or so the topic of the content where the link appears is so much more important. So you need to get a link from financial content if you have a financial site.

Going back to backrok in particular, it could be that the owner of the PBN probably did want to create a network of financial sites, so that's why finance content was used. Historically, looking at the links over the past 15 years, though, it appears a lot of the anchor text used was 'property management' related, so maybe it was a network of property management sites? I also see "eye cream" links as well, though.

 

[Keith]

I can't speak about the intent and why the site contained financial related content. But I can tell you about PBNs.
Back when this domain was registered, 2002, the "black hat SEOs" would buy a ton of domains (let's say 500 domains) and put up auto-generated content on those sites. Could be from feeds such as RSS feeds, scraping content, whatever. They then would link those 500 sites together, creating a PBN (private blog network). They'd usually have some way to easily control the links and the anchor text of the links.

So the content itself wasn't really important at all, as long at it would get crawled and indexed by the search engines so they could recognize the links. Who cares about the content as long as the links are there.

Back from 2002-2016 or so, the content/topic of the site didn't matter as long as the link was there in the content or on the site. But now in the past 5 years or so the topic of the content where the link appears is so much more important. So you need to get a link from financial content if you have a financial site.

Going back to backrok in particular, it could be that the owner of the PBN probably did want to create a network of financial sites, so that's why finance content was used. Historically, looking at the links over the past 15 years, though, it appears a lot of the anchor text used was 'property management' related, so maybe it was a network of property management sites? I also see "eye cream" links as well, though.

You’ve never answered why it was listed for sale at $2150. Seems like a last minute cash grab attempt from the owners you claim had legitimate rights to the asset.

 

[bhartzer]

You’ve never answered why it was listed for sale at $2150. Seems like a last minute cash grab attempt from the owners you claim had legitimate rights to the asset.

I never answered that because I have absolutely no idea why it was listed for sale.

I only know about this lawsuit because the former owner of that domain got in touch with my agency's DNAccess service, which recovers stolen domain names.

They wanted to know why their domain was missing from their account, as they considered it 'stolen'. I did some research and found this above-named lawsuit.