Bloomberg Finance L.P. v. Privacy Protection
Claim Number: FA2109001967145
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Melonie Callender of Bloomberg L.P., New York, USA. Respondent is Privacy Protection (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergbtc.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2021; the Forum received payment on September 30, 2021.
On October 1, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <bloombergbtc.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2021 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@bloombergbtc.com. Also on October 6, 2021, 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 November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Bloomberg Finance L.P., operates one of the world’s largest providers of financial news. Complainant has rights in the BLOOMBERG mark through its registration with the South Korea Intellectual Property Office (“KIPO”) (e.g., Reg. 43,099, registered Jun. 26, 1998). See Compl. Ex. A. Respondent’s <bloombergbtc.com> domain name is identical or confusingly similar to Complainant’s BLOOMBERG mark, merely adding the letters “BTC” as an acronym for the cryptocurrency Bitcoin along with adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bloombergbtc.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the BLOOMBERG mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but instead to host a parked website which makes a general offer to sell the disputed domain name.
Respondent registered and uses the <bloombergbtc.com> domain name in bad faith. Respondent makes a general offer to sell the disputed domain name on the resolving website, demonstrating bad faith. Complainant also points to Respondent’s failure to respond to a cease-and-desist letter as evidence of bad faith. Additionally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BLOOMBERG mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that is one of the world’s largest providers of financial news.
2. Complainant has established its trademark rights in the BLOOMBERG mark through its registration of the mark with the South Korea Intellectual Property Office (“KIPO”) (e.g., Reg. 43,099, registered June 26, 1998).
3. Respondent registered the <bloombergbtc.com> domain name on July 31, 2021.
4. Respondent has caused the domain name to be used to host a parked website which makes a general offer to sell the disputed domain name.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BLOOMBERG mark through its registration with the KIPO. Registration of a mark with a nation’s trademark agency is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Chevron Intellectual Property LLC v. PAUL DAVID SONG, FA 1800906 (Forum Sept. 26, 2018) (“Registration of a mark with a national trademark agency such as the KIPO is sufficient to establish rights in that mark.”). Complainant provides evidence of its registration with the KIPO (e.g., Reg. 43,099, registered Jun. 26, 1998). See Compl. Ex. A. Thus, the Panel finds Complainant has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLOOMBERG mark. Complainant argues that Respondent’s <bloombergbtc.com> domain name is identical or confusingly similar to Complainant’s BLOOMBERG mark, merely adding the popular acronym “BTC” to denote the cryptocurrency Bitcoin and adding the “.com” gTLD. Previous Panels have held such changes are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). The Panel therefore fin the disputed domain name is identical or confusingly similar to Complainant’s BLOOMBERG mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show 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”).
(a) Respondent has chosen to take Complainant’s BLOOMBERG trademark and to use it in its domain name, adding the popular acronym “BTC” to denote the cryptocurrency Bitcoin which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <bloombergbtc.com> domain name on July 31, 2021;
(c) Respondent has caused the domain name to be used to host a parked website which makes a general offer to sell the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <bloombergbtc.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the BLOOMBERG mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information of record identifies “Privacy Protection” as the registrant of the disputed domain name. See Compl. Ex. E; see also registrar verification email. Additionally, nothing in the record rebuts Complainant’s contention that it did not authorize Respondent’s use of the BLOOMBERG mark. Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <bloombergbtc.com> domain name for a bona fide offer of goods or services or for any legitimate noncommercial or fair use, instead resolving the domain name to a parked website offering the domain name for sale. Such use does not constitute either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the disputed domain name as evidence that Respondent uses the domain name to host a parked website offering the domain name for sale. See Compl. Ex. G. The Panel then finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <bloombergbtc.com> domain name in bad faith because Respondent has offered the domain name for sale. Making a general offer to sell an infringing domain name may demonstrate bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). As previously noted, Complainant provides screenshots of the disputed domain name as evidence that Respondent has offered to sell the domain name. See Compl. Ex. G. The Panel therefore finds bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent’s failure to respond to a cease-and-desist letter regarding the <bloombergbtc.com> domain name provides additional evidence of bad faith. Previous Panels have found that failure to respond to a cease-and-desist can demonstrate bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant has provided a copy of the letter sent to Respondent as evidence of Respondent’s bad faith. See Compl. Ex. H. Thus, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent registered the <bloombergbtc.com> domain name with actual knowledge of Complainant’s rights in the BLOOMBERG mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith and may be demonstrated by the notoriety of a mark and the use Respondent makes of the disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant operates one of the largest and most well-known financial news organizations in the world, and Respondent registered a domain name with the entirety of the BLOOMBERG mark, adding the related acronym “BTC,” and has offered to sell the domain name. Complainant also provides evidence of the well-known nature of its mark. See Compl. Ex. F. As the Panel agrees that actual knowledge was present in this case, it finds bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BLOOMBERG mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergbtc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated November 2, 2021
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