Bloomberg Finance L.P. v. Lankanspace.com / Nimo Perera
Claim Number: FA1902001828409
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Lankanspace.com / Nimo Perera (“Respondent”), Sri Lanka.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergspl.com>, registered with Namesilo, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2019; the Forum received payment on February 4, 2019.
On February 5, 2019, Namesilo, Llc confirmed by e-mail to the Forum that the <bloombergspl.com> domain name is registered with Namesilo, Llc and that Respondent is the current registrant of the name. Namesilo, Llc has verified that Respondent is bound by the Namesilo, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bloombergspl.com. Also on February 5, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Bloomberg Finance L.P., is one of the largest providers of financial news and data in the world and uses the BLOOMBERG trademark in connection with its goods and services. Complainant has rights in the BLOOMBERG mark based upon registrations in a number of countries including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <bloombergspl.com> is confusingly similar to Complainant’s BLOOMBERG mark as the Respondent merely adds only the acronym “spl” and appends the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <bloombergspl.com> domain name. Respondent is not permitted or licensed to use Complainant’s BLOOMBERG mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to trade upon Complainant’s global reputation.
Respondent registered and is using the <bloombergspl.com> domain name in bad faith. Respondent attempts to divert traffic away from Complainant to Respondent’s website. Respondent also failed to respond to Complainant’s cease and desist letter. Furthermore, Respondent must have had actual and/or constructive notice of Complainant’s mark before registering the <bloombergspl.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the Panel is unable to conclude that Respondent has no rights or legitimate interests in the domain name; and
(3) the Panel is unable to determine whether the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the BLOOMBERG trademark based upon its registrations in various countries including with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a list of its USPTO registrations for the BLOOMBERG mark and copies of some of its other trademark registrations around the world. Therefore, the Panel finds that Complainant has established rights in the BLOOMBERG mark per Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <bloombergspl.com> is confusingly similar to the BLOOMBERG mark as Respondent incorporates Complainant’s BLOOMBERG mark and adds the generic/descriptive term “spl” and the “.com” gTLD to the mark. Adding a generic or descriptive term and a gTLD to a mark does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); see also See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <bloombergspl.com> is confusingly similar to Complainant’s BLOOMBERG mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
In this case, the Panel finds that the Complainant has not met its evidentiary burden or presented a prima facie case that the Respondent lacks rights and legitimate interests in the <bloombergspl.com> domain name. Rather, there are a number of factual and legal issues that are unresolved by the evidence presented and the Panel is of the opinion that this case is not one that is well suited for resolution under the Policy. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that “can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery….”)
One example of an unresolved evidentiary and legal issue is the question of whether the Respondent has created a legal business entity in Sri Lanka by the name of The Bloomberg Solutions (Pvt) Ltd. Complainant submits into evidence copies of certain correspondence it had with the Respondent, starting with a February 21, 2018 demand letter. In its March 15, 2018 response to this demand letter, the Respondent states that the above-named entity “is а registered company in Sri Lanka. According to the Sri Lankan legal system, the company name was approved by the Company Registrar and granted me the registration.” Although no certificate or other evidence of this company registration is provided, on April 27, 2018 the Complainant replied to the Respondent demanding, among other things, that it “immediately apply for change of your company name to exclude 'Bloomberg' therefrom”.
In light of this exchange, this Panel finds that there is an open question of whether the Respondent has a legitimate corporate entity registration in Sri Lanka and, if so, what the impact of such registration has on any claim the Respondent may have to use of the Bloomberg name (it is noted that the exhibits to this UDRP Complaint do not include a Sri Lankan trademark registration for the BLOOMBERG mark). Ownership of a corporate entity whose name bears on the disputed domain name can demonstrate rights or legitimate interests in a domain name. Wilson Vineyards, Inc. A California Corporation v. Zachary Wilson / Wilson Vineyard, FA 1656048 (Forum Feb. 19, 2016) (“Respondent contends that it is commonly known by the <wilsonvineyard.com> domain name because it became incorporated as Wilson Vineyard LLC in 2010. *** This evidence is sufficient to show having been commonly known by the domain….”).
The next open issue that remains of concern is the different uses to which the Complainant and Respondent put the term “Bloomberg”. As noted, Complainant is very well known for providing financial news and data. However, in its March 15, 2018 letter, the Respondent states, “I understand that we do not engage in the same business and my services limits to software field while your company engages in news and financial segment.” A review of Respondent’s website that resolved from the <bloombergspl.com> domain name confirms that its services are focused on providing software and “technology solutions in Architecture, Engineering & Construction (AEC), Manufacturing, Infrastructure, Media & Entertainment and other software requirements with high service quality for Sri Lankan organizations.” Based upon the evidence submitted in this case the Panel agrees that Complainant’s BLOOMBERG mark is very well known. However, there remains the question of whether its reputation is limited to its financial related services and whether Respondent’s use for software is not a bona fide offering of goods or services under Policy 4(c)(i). It is a well-accepted principle of trademark law that the same mark may be concurrently used by different entities for unrelated goods and services (e.g., DELTA for airlines, faucets, power tools, and DOVE for soap and ice cream bars). The present record does not contain sufficient evidence relating to the scope of Complainant’s rights in the BLOOMBERG mark (for example, listings of third-party companies that use the Bloomberg name for goods and services in fields that are unrelated to Complainant’s financial related services).
In light of the above-mentioned open questions of fact and law that are presented in this case, the Panel finds that it is unable, within the limited framework of the Policy, to determine whether the Respondent is commonly known by the <bloombergspl.com> domain name or whether it has made a bona fide offering of goods or services under such name. The Policy was created to address clear cases of cybersquatting and these open questions are better left to a courtroom setting with its more robust evidentiary procedures.
In light of the Panel’s finding regarding Policy ¶ 4(a)(ii), it is similarly difficult for this Panel to find, by a preponderance of the evidence, that the Respondent specifically targeted Complainant’s BLOOMBERG mark and acted in bad faith when it registered and used the <bloombergspl.com> domain name.
In its March 15, 2018 letter to Complainant, the Respondent stated, “I was not aware of your trade name”. While the Complainant did submit evidence demonstrating that its BLOOMBERG mark is well known around the world for financial news and related services, there are no circumstances here which indicate that the Respondent’s claimed lack of knowledge is not credible. There is no attempted trickery, false information, request for money from the Complainant, etc. that would lead this Panel to conclude that the Respondent should not be taken at its word. There is also no submitted trademark registration for the BLOOMBERG mark with effect in Sri Lanka. The Respondent further stated that “When I founded the company, with the meaning of mountain of flowers (Bloom + Berg), I named my company as 'bloomberg'. I have presented bloomberg as two words, in two different colors and font styles, in emphasizing the concept.” While this statement could be viewed as a post-complaint rationalization, within the full context of this case it does not tip the preponderance of evidence scale into a clear finding of bad faith. Finally, it is worth noting that, in a June 12, 2018 letter to the Complainant, the Respondent states that “we are in a process of changing our company name to some other name. As stated in the letter we have stopped our website also.” This latter point is confirmed by the Respondent’s current use of the name NovelTech for its business and the domain name <noveltechspl.com> for its website. In light of these statements and actions, as noted above, a courtroom setting and witness cross-examination would be far more appropriate than use of the Policy for testing the credibility of the Respondent’s statements and the legal impact of its actions. Within the confines of the present case, however, the Panel is unable to determine whether the Respondent specifically targeted Complainant’s BLOOMBERG mark in bad faith, or whether it sought to use the disputed domain name in a more innocent good faith effort to promote its software business.
For the foregoing reasons, the Panel finds that it cannot, by a preponderance of the evidence, conclude that the Respondent registered and used the <bloombergspl.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bloombergspl.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: February 28, 2019
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