Bloomberg Finance L.P. v. Thomas Hampson / ClickTech Solutions Ltd.
Claim Number: FA1906001850421
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Thomas Hampson / ClickTech Solutions Ltd. (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg-college.com> registered with Amazon Registrar, Inc..
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.
Luca Barbero as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2019; the Forum received payment on June 28, 2019.
On July 2, 2019, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <bloomberg-college.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. 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 July 3, 2019, the Forum sent a deficiency letter to Bloomberg Finance L.P. asking them to amend the Respondent’s details to reflect the contact information sent by Amazon Registrar, Inc.
On July 5, 2019, the Complainant sent back an amended version of the Complaint.
On July 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@bloomberg-college.com. Also on July 8, 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.
A timely Response was received and determined to be complete on July 11, 2019.
On August 05, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luca Barbero 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant highlights that it was founded in 1981 and in time has become one of the largest providers of global financial news and data and related goods and services, being recognized and trusted worldwide as a leading source of financial information and analysis.
Complainant asserts that its marks are strong and have gained secondary meaning through their continued use in connection with Complainant’s electronic trading, financial news, analytics, and information businesses.
Complainant contends that the Domain Name is confusingly similar to the BLOOMBERG mark and that the Respondent’s Domain Name fully incorporates the BLOOMBERG mark with the sole addition of the word “college” in a blatant attempt to garner the goodwill and recognition of the famous BLOOMBERG mark.
Given the close similarity between Complainant’s mark and the Respondent’s Domain Name, Complainant concludes that it is likely that an Internet user would mistakenly believe the website accessible at the Domain Name as being affiliated with Complainant.
Furthermore, Complainant highlights that there is no evidence to suggest that Respondent, currently listed on the WHOIS record, is commonly known by the BLOOMBERG name.
In view of the above, Complainant argues that the Respondent registered and is using the Domain Name in order to trade upon the Complainant’s global reputation. As a result, Respondent cannot claim a right or legitimate interest in the Domain Name based on the notion that it has used the Domain Name or corresponding name in connection with a bona fide offer of goods or services.
Complainant also avers that Respondent has no legitimate interest or basis to claim non-commercial fair use of Complainant’s BLOOMBERG mark and concludes that judging by the above circumstances Respondent probably never intended to provide a legitimate, non-commercial fair use of the Domain Name.
With regards to the use in bad faith of the Domain Name, Complainant indicates that the <bloomberg.com> domain name was registered by Bloomberg on September 29, 1993 and has been in continuous use since 1993. Consequently, Respondent’s use of the BLOOMBERG mark leads inescapably to the conclusion that Respondent was aware of Complainant’s marks before registering the Domain Name.
Moreover, Respondent’s failure to respond to Complainant’s cease and desist letter would support a further finding of bad faith.
B. Respondent
Respondent asserts that it operates as an online advertising platform that, as part of a signup process, allows customers to select their own domain names which it registers on their behalf. Respondent admits that, in this case, its customer has registered a domain name a third party has relevant concerns over and states that it would be happy to comply to the request of transfer of the Domain Name if required.
However, Respondent indicates that the Domain Name was previously contested on case FA1902001829567, but despite the willingness shown to comply, it never received a response. Respondent thus suggests that the issue should be put at rest and no further action should be taken.
Respondent attaches to the Complaint an Order to dismiss the Complaint without prejudice issued by the Forum in such previous case, since the parties were granted a stay but did not file with the Forum a request to continue the Administrative Proceeding within the prescribed deadline.
Complainant and its affiliate companies own the trademark BLOOMBERG for information services registered in several countries and which predate the registration date of the disputed domain name.
Complainant is also the owner of the several domain names encompassing BLOOMBERG, including <bloomberg.com>, registered September 29, 1993, and <bloomberg.net>, registered March 8, 1997.
Respondent registered the Domain Name <bloomberg-college.com> on October 24, 2018, without authorization of Complainant.
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.
Complainant has establishd rights in the BLOOMBERG mark based on its registration of such mark with various national trademark registries worldwide. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015), asserting that a complainant’s registration with the USPTO or any other governmental authority adequately proves its rights under paragraph 4(a)(i) of the Policy.
The disputed Domain Name <bloomberg-college.com> incorporates Complainant’s BLOOMBERG mark in its entirety with the addition of the descriptive term “college”, a hyphen and the “.com” gTLD.
As stated in prior cases, the addition of non-distinctive, descriptive or generic terms and a gTLD to a complainant’s mark does not exclude any confusing similarity between a disputed domain name and mark under paragraph 4(a)(i) of the Policy. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); and Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
In view of the above, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BLOOMBERG mark according to paragraph 4(a)(i) of the Policy.
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, then the burden 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 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”).
Based on the records, Complainant has not licensed, permitted, or authorized Respondent to use Complainant’s mark and there is no evidence that Respondent or its customer on behalf of which the Domain Name was allegedly registered might be commonly known by the disputed Domain Name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Moreover, there is no evidence that the Respondent is using the Domain Name, which undoubtfully corresponds to Complainant’s famous mark, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. Bloomberg Realty (India) Private Limited, Forum Case Number FA1204001439263, http://www.adrforum.com/domaindecisions/1439263.htm (“Use of a domain name which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”).
In view of the above, the Panel finds that Complainant has demonstrated that the Respondent has no rights or legitimate interests in the Domain Name according to paragraph 4(a)(ii) of the Policy.
The Panel notes that the disputed Domain Name was registered several years after Complainant’s first registration and use of the BLOOMBERG mark. Moreover, as highlighted in the prior cases decided by the Forum cited by Complainant and referenced above, Complainant’s mark is well-known in the financial sector.
In view of the above, the Panel finds that, in all likelihood, the actual holder of the Domain Name registered the Domain Name in bad faith having Complainant’s trademark in mind.
As to the use of the Domain Name, the Panel notes that it is currently pointed to a website displaying only the wording “the requested URL was not found on this server”. The Panel notes that, in view of the well-known character of Complainant’s trademark, also the passive holding of the Domain Name incorporating it amounts to bad faith. Moreover, the Panel finds that any use of the Domain Name would cause confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the same and of the corresponding website.
Furthermore, the Panel acknowledges that Respondent’s failure to respond to Complainant’s cease and desist letter supports a finding of bad faith, especially where, as in this case, the trademark in question has substantial goodwill and reputation.
In view of the above, the Panel finds that Complainant has proven that Respondent registered and is using the Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloomberg-college.com> domain name be TRANSFERRED from Respondent to Complainant
Luca Barbero, Panelist
Dated: August 19, 2019
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