national arbitration forum

 

DECISION

 

Bloomberg Finance L.P. v. Bloobberg United c/o Essam Mahmoud

Claim Number: FA0806001203727

 

PARTIES

Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Fara Sunderji, of Willkie Farr & Gallagher LLP, New York, USA.  Respondent is Bloobberg United c/o Essam Mahmoud (“Respondent”), Egypt.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bloombergunited.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

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.

 

Louis E Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2008.

 

On June 11, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <bloombergunited.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 June 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 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@bloombergunited.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <bloombergunited.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.

 

2.      Respondent does not have any rights or legitimate interests in the <bloombergunited.com> domain name.

 

3.      Respondent registered and used the <bloombergunited.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Since Complainant adopted the name BLOOMBERG in 1986, it has become one of the largest providers of worldwide financial news and information and related goods and services.  Complainant is headquartered in New York and employs more than 10,000 people in over 126 offices around the world.  It and its subsidiaries have likewise registered the BLOOMBERG mark in numerous jurisdictions worldwide, including with the Government of India Controller General of Patents, Designs, and Trademarks (“GOI”) (Reg. No. 386,695 issued June 13, 2005). 

 

Respondent’s <bloombergunited.com> domain name was registered on March 1, 2008.  It currently resolves to a website with the banner: “The website is under construction please visit us later.”

 

DISCUSSION

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 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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has registered the BLOOMBERG mark in numerous jurisdictions worldwide, including with the GOI.  The Panel finds Complainant’s registration of the BLOOMBERG mark with the GOI sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities.  The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The <bloombergunited.com> domain name contains Complainant’s BLOOMBERG mark in its entirety followed by the generic word “united” and the generic top-level domain (“gTLD”) “.com.”  Generally speaking, the addition of a generic word does not distinguish a disputed domain name.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).  Previous panels have likewise found that the addition of a generic or descriptive term to the BLOOMBERG mark does nothing to distinguish a disputed domain name.  See Bloomberg L.P. v. Scharf, FA 96264 (Nat. Arb. Forum Jan. 13, 2001) (finding the <bloombergchannel.com> domain name to be confusingly similar to the BLOOMBERG mark, because “[t]he addition of the generic word ‘channel’ does not negate the confusing similarity.”); see also Bloomberg L.P. v. Joseth, FA 214417 (Nat. Arb. Forum Jan. 19, 2004) (finding the <bloombergtrust.com> domain name to be confusingly similar to the BLOOMBERG mark, stating “[t]he addition of the generic or descriptive term ‘trust’ fails to sufficiently differentiate the domain name from the mark with regard to Policy ¶ 4(a)(i)”).  Likewise, the inclusion of a gTLD is regarded as irrelevant for a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  For all of these aforementioned reasons, the Panel finds the <bloombergunited.com> domain name to be confusingly similar to the BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).

 

The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has sufficiently met its burden of producing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  Therefore, it is Respondent’s responsibility to repudiate Complainant’s assertion and provide evidence that Respondent does have rights or legitimate interests in the disputed domain name.  See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).

 

However, Respondent has failed to submit a Response to the Complaint.  Consequently, the Panel may presume that Respondent has no rights or legitimate interests in the <bloombergunited.com> domain name.  It will nevertheless examine the record in consideration of the factors cited under Policy ¶ 4(c).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); 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.”).

 

Complainant has not licensed or otherwise permitted Respondent to use its BLOOMBERG mark in any way.  Additionally, there is no evidence in the record to indicate that Respondent is or ever was commonly known by the disputed domain name.  Absent any additional evidence, the Panel finds that Complainant is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

In KB Home v. Nguyen, FA 1045203 (Nat. Arb. Forum Sept. 10, 2007), two disputed domain names resolved to a web page stating that it was “under construction.”  The panel in that proceeding found that the “[r]espondent’s failure to use the <kbhome.mobi> and <kbhomes.mobi> domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”  In a similar fashion, Respondent has made no active use of the disputed domain name in this case.  It currently resolves to a message stating “the website is under construction please visit us later.”  Remaining in line with precedent, this Panel also finds that Respondent is not using the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or in a legitimate noncommercial or fair way pursuant to Policy ¶ 4(c)(iii).  See also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [inactive use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel concludes that the scenarios listed under Policy ¶ 4(b) are not exclusive, and that it may consider additional circumstances in determining whether or not Respondent registered and is using the disputed domain name in bad faith.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).

 

When a respondent fails to submit a response to a complaint, there is no assertion of Respondent’s good faith intent to use the disputed domain name.  This in addition to the inactive holding of the disputed domain name should lead to the conclusion that a respondent has registered and is using a domain name in bad faith.  See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000).  Respondent has made no effort to respond to Complainant’s allegations, and likewise, the disputed domain name remains unutilized displaying only an “under construction” sign.  Accordingly, the Panel finds this inactive use of the <bloombergunited.com> domain name to establish that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii). 

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <bloombergunited.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon Panelist

Dated:  July 22, 2008

 

 

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