Bloomberg Finance L.P. v. Christopher Clarke
Claim Number: FA2009001915428
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Paul Ramundo of Bloomberg L.P., New York, USA. Respondent is Christopher Clarke (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg-tf.com>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2020; the Forum received payment on September 30, 2020.
On October 1, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bloomberg-tf.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2020 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-tf.com. Also on October 5, 2020, 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 October 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BLOOMBERG mark through its ownership of the international portfolio of registered trademarks described below and its extensive reputation and goodwill that it has established in the mark though global use in its international publishing and media business. Complainant submits that its corporate parent, Bloomberg L.P., a Delaware limited partnership, has been in business continuously since 1981, and has operated under the “Bloomberg” name in the United States and around the world since at least as early as 1987.
Complainant adds that it has become one of the largest providers of global financial news and data and related goods and services and is recognized and trusted worldwide as a leading source of financial information and analysis. One of the many products and services offered by Bloomberg is the BLOOMBERG TERMINAL service, which provides access to news, analytics, communications, charts, liquidity, functionalities, and trading services. There are currently over 320,000 Bloomberg Terminal subscribers worldwide. Bloomberg is headquartered in New York City, and employs 19,000 people in 176 locations around the world.
Complainant’s authorized affiliate Bloomberg Trading Facility BV, based in the Netherlands has been approved by the Netherlands Authority for the Financial Markets to provide a Multilateral Trading Facility which was announced in January 2019.
Complainant submits that the disputed domain name is confusingly similar to the BLOOMBERG mark. The disputed domain name fully incorporates the BLOOMBERG mark and adds only the letters “tf” in a blatant attempt to garner the goodwill and recognition of the famous BLOOMBERG mark.
Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submits that there is no evidence to suggest that Respondent currently listed on the WHOIS record is commonly known by the Bloomberg name.
Complainant asserts that it has not licensed or otherwise permitted Respondent to use Complainant’s BLOOMBERG mark or any of Complainant’s family of marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
Complainant states that on June 3, 2020, its representative sent a demand letter to the e-mail address listed on Respondent’s WHOIS information. The Respondent never replied to Complainant’s correspondence.
Complainant alleges that Respondent registered and is using the disputed domain name in order to trade upon Complainant’s global reputation. As a result, Respondent cannot claim a right or legitimate interest in the disputed domain name on the notion that it has used the disputed domain name or a corresponding name in connection with a bona fide offer of goods or services. See Bloomberg L.P. v. Bloomberg Realty (India) Private Limited, Forum Case Number FA1204001439263 (“Use of a domain name which intentionally trade on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”).
Additionally, Complainant argues that Respondent has no legitimate interest and no basis to claim non-commercial fair use of Complainant’s BLOOMBERG mark and Respondent never intended to provide a legitimate, non-commercial fair use of the disputed domain name.
Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant asserts that it has a strong reputation and a high-profile presence in the financial and media sectors and is the subject of substantial consumer recognition and goodwill. Its <bloomberg.com> domain name was registered by Bloomberg on September 29, 1993 and has been in continuous use since 1993. Such facts and Respondent’s use of the BLOOMBERG mark lead inescapably to the conclusion that Respondent was aware of Complainant’s BLOOMBERG mark before registering the disputed domain name.
Referring to a screenshot of the website to which the disputed domain name resolves, which purports to offer financial services und the name “Bloomberg Trading” and invites Internet users to “contact one of our portfolio managers and “Open an Account”, Complainant argues that this illustrates that Respondent was aware of Complainant’s name and mark when it impersonated Complainant’s Netherlands based affiliate “Bloomberg Trading Facility BV” in order to commit fraud.
Complainant argues that Respondent relied on Bloomberg’s well-established reputation and the Bloomberg Trading Facility BV name to make fraudulent offers and solicit investments, defrauding several consumers and submits that arbitrators have routinely found bad faith in circumstances where it is unlikely the registrant would have selected a Bloomberg Domain Name without knowing the reputation of the well-known trademark in question. See Bloomberg Finance L.P. v. Bloomberg Investments, Forum Case Number FA1603001665140, (“Given the notoriety of Complainant’s mark and the use given the disputed domain name by Respondent, the Panel agrees with Complainant relative to Respondent's actual knowledge, and finds that Respondent registered the domain name in bad faith”).
Lastly, citing TDS Telecommunications Corporation v. Registrant Nevis Domains and Registrant Moniker Privacy Services, WIPO case no. D2006-162, Complainant submits that Respondent’s failure to respond to the Complainant’s cease and desist letter also supports a finding of bad faith, especially where, as in this case the trademark in question has substantial goodwill and reputation.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a publishing company that uses the BLOOMBERG mark providing financial news, data and related goods across the world. Within its corporate structure, Complainant and a subsidiary company within Complainant’s group own an international portfolio of registered trademarks service marks containing the word BLOOMBERG including:
· Chilean registered trademark BLOOMBERG, registration number 1035931, registered on August 26, 2013 for services in class 36;
· Chilean registered trademark BLOOMBERG, registration number 1226380, registered on January 16, 2017 for services in classes 36, 38 and 41;
· Chilean registered trademark BLOOMBERG, registration number 122638. Registered on January 16, 2017 for goods in classes 9 and 16;
· Czech registered trademark BLOOMBERG, registration number 257639, registered on September 29, 2003 for services in class 35;
· Korean trademark BLOOMBERG, registration number 0389612, registered on January 5, 1998 for goods in international class 9;
· European Union Trade Mark BLOOMBERG, registration number 004718383 registered on February 19, 2007 for goods and services in classes 9,16, 36, 38, 41.
The disputed domain name was registered on disputed domain name on June 6, 2020 and resolves to a website that purports to offer financial services, inviting members of the public to register online.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information about the registrant of the disputed domain name that was disclosed by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. Respondent has availed of a privacy service to conceal his identity on the published WhoIs.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided clear and convincing evidence of its rights in the BLOOMBERG mark through its ownership of the international portfolio of registered trademarks described below and its extensive reputation and goodwill that it has established in the mark though global use in its international publishing and media business.
The disputed domain name consist of the letters BLOOMBERG mark, a hyphen, the letters “tf” and the gTLD <.com>.
Complainant’s mark is the initial, dominant and only distinctive element of the disputed domain name. The hyphen and the letters “tf” contribute no distinguishing characteristic to the disputed domain name.
The gTLD <.com> extension is typically disregarded under the first element confusing similarity test, as it a standard requirement for registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name submitting
· that there is no evidence to suggest that the Respondent currently listed on the WHOIS record is commonly known by the Bloomberg name;
· that Complainant has not licensed or otherwise permitted Respondent to use Complainant’s BLOOMBERG mark or any of Complainant’s family of BLOOMBERG marks;
· that Complainant has not licensed or otherwise permitted Respondent to apply for or use any domain name incorporating BLOOMBERG;
· that Respondent never replied to Complainant’s cease and desist letter sent on June 3, 2020;
· that Respondent registered and is using the infringing domain name in order to trade upon Complainant’s global reputation;
· that Respondent cannot claim a right or legitimate interest in the disputed domain name based on the notion that it has used the disputed domain name or a corresponding name in connection with a bona fide offer of goods or services. See Bloomberg L.P. v. Bloomberg Realty (India) Private Limited, Forum Case Number FA1204001439263 (“Use of a domain name which intentionally trade on the fame of another cannot constitute a bona fide offering of goods and services”); and
· that Respondent has no legitimate interest and no basis to claim non-commercial fair use of Complainant’s BLOOMBERG mark.
· Complainant concludes that the above circumstances show that Respondent never intended to provide a legitimate, non-commercial fair use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it had an established international reputation prior to the registration of the disputed domain name on June 6, 2020.
While Complainant is primarily a publishing and media corporation its has a reputation in providing financial news. Additionally, its Netherland’s affiliate has been approved by the Netherlands Authority for the Financial Markets to provide a Multilateral Trading Facility. In an annex to the Complaint, Complainant has adduced in evidence a copy of a report announcing this authorization on January 15, 2019.
This Panel finds therefore that in the absence of any explanation, on the balance of probabilities the disputed domain name was chosen and registered in order to take predatory advantage of the BLOOMBERG mark and the goodwill of Complainant’s group of companies.
The evidence shows that the disputed domain name resolves to a website that purports to offer financial services. Complainant has alleged that it is thereby impersonating Complainant’s Netherlands based affiliate “Bloomberg Trading Facility BV” in order to commit fraud.
While there is no evidence of fraud, Respondent has not responded or denied this allegation and there is no evidence that the website to which the disputed domain name resolves in fact provides any services. This Panel finds therefore that on the balance of probabilities the website to which the disputed domain name resolves is a sham.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name as the address of a website in an intentional attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's BLOOMBERG mark as to the source, sponsorship, affiliation, or endorsement of his web site and the services that Respondent purports to offer.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith as Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
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-tf.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 29, 2020
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