Bloomberg Finance L.P. v. ASOT Investments LLC
Claim Number: FA0803001156100
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Fara
Sunderji, of Willkie Farr & Gallagher LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bloombergbiz.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 4, 2008.
On March 4, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bloombergbiz.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 27, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bloombergbiz.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant is a worldwide leader in financial news and information, and has used the BLOOMBERG mark in connection with its dissemination of news and information based on current events and financial happenings.
Complainant owns a number of trademark registrations for the
BLOOMBERG mark, including that filed with the Trade Marks Registry of the government
of
Respondent is neither commonly known by the <bloombergbiz.com> domain name nor licensed to register domain names using the famous BLOOMBERG mark.
Respondent registered the <bloombergbiz.com> domain name on January 15,
2008.
Respondent’s
domain name resolves to a website advertising, for its commercial gain,
Internet marketing business strategy products.
Respondent’s <bloombergbiz.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.
Respondent uses the <bloombergbiz.com> domain name in order to attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s mark.
Respondent does not have any rights to or legitimate interests in the domain name <bloombergbiz.com>.
Respondent registered and uses the <bloombergbiz.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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(e), 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 (Nat. Arb. Forum July 31, 2000) (holding that a 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has adequately established rights in the BLOOMBERG trademark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the Indian Trademark Authority. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; it is sufficient that a complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Respondent’s <bloombergbiz.com>
domain name
is confusingly similar to Complainant’s BLOOMBERG mark. The domain name contains Complainant’s entire
mark, and merely adds the generic shorthand term “biz” and the generic top-level
domain (“gTLD”) “.com.” Such a domain
name is confusingly similar to the competing mark pursuant to Policy ¶
4(a)(i). See, for example, Arthur
Guinness Son & Co. (
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants. . . .
The Panel finds, therefore, that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights to and
legitimate interests in the <bloombergbiz.com>
domain
name. When Complainant makes out a prima facie case in support of its
allegations, the burden is shifted to Respondent to prove that it does have
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist).
From our review of the Complaint, it is evident that Complainant has established a prima facie case sufficient for purposes of the Policy. Respondent, for its part, has failed to respond to the Complaint. Given Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce requested documentation supports a finding for a complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
However, we elect to examine the evidence for applicable Policy ¶ 4(c) elements before making a final determination with regard to Respondent’s rights and legitimate interests.
In this connection, we first observe that Complainant
contends, and Respondent does not deny, that Respondent is neither commonly
known by the <bloombergbiz.com> domain name, nor licensed
to register domain names using the famous BLOOMBERG mark. Indeed, Respondent’s WHOIS information
identifies Respondent as “ASOT Investments LLC,” which gives no evidence that
Respondent is or was ever commonly known by the disputed domain name. Therefore, we conclude that Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” is a factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
We also note that there is no dispute as to Complainant’s contention that Respondent is using the <bloombergbiz.com> domain name in order to attract Internet users to its website by creating a strong likelihood of confusion with Complainant’s mark. The same is true as to complainant’as allegation that at the associated website Respondent offers products and services for commercial gain. Such use is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because a respondent uses an infringing domain name to sell prescription drugs, a panel could infer that that respondent uses a complainant’s mark to attract Internet users to its website for commercial benefit); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to attract Internet users to its website, which offered both that complainant’s products and those of that complainant’s competitors).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of the disputed domain name to attract Internet users to the associated website for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question is obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark and the domain name was used to host a commercial website that offered services similar to those offered by that complainant under its mark).
In addition, it appears that Respondent registered the <bloombergbiz.com> domain name with at least constructive knowledge of
Complainant’s rights in the BLOOMBERG trademark by virtue of Complainant’s
prior registration of that mark with the Trade Marks Registry of the
government of India. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bloombergbiz.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 11, 2008
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