Bloomberg Finance L.P. v. Oleg G. Verin
Claim Number: FA0901001240572
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Genevieve
Blake, of Willkie Farr & Gallagher LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg-s.com>, registered with
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
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2009, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant holds registrations of the BLOOMBERG mark with many governmental authorities (including Reg. No. 2,736,744, issued July 15, 2003, by the United States Patent and Trademark Office (USPTO).
Complainant uses the BLOOMBERG mark in connection with its business of offering financial news services worldwide.
Complainant has not granted Respondent a license to use its BLOOMBERG mark.
Respondent registered the <bloomberg-s.com>
domain name on
The disputed domain name resolves to a website entitled
“Bloomberg Strategies” and which purports to offer financial consulting services
out of offices in
This website also displays an ®, a recognized symbol for registered trademarks, after the “Bloomberg Strategies” title.
Respondent’s <bloomberg-s.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.
Respondent does not have any rights to or legitimate interests in the <bloomberg-s.com> domain name.
Respondent registered and uses the <bloomberg-s.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(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 to or legitimate interests in respect of the domain name; and
(3) the 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
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 established its rights in the BLOOMBERG mark due to its USPTO and international
trademark registrations. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum
has established rights in the AIG mark through registration of the mark with
several trademark authorities throughout the world, including the
domain name consists of Complainant’s entire BLOOMBERG
mark, followed by a hyphen, the letter “s,” and the generic top-level domain
(gTLD) “.com.” The domain name is
confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a)(i) because these
additions, whether taken singly or together, are sufficient to disguish the
disputed domain name from the mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
See also, for example, Health
Devices Corp. v.
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Further see Google, Inc. v. DktBot.org, FA 286993
(Nat. Arb. Forum
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights to or legitimate interests in the
disputed domain name. If Complainant’s allegations establish such a prima
facie case, the burden then shifts to Respondent to show that it does
indeed have rights to or legitimate interests in the disputed domain name,
whether pursuant to the guidelines in Policy ¶ 4(c) or otherwise. See
Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights to or legitimate interests in the <bloomberg-s.com>
domain name pursuant to Policy ¶ 4(a)(ii). And, because no response was submitted in this proceeding,
we may presume that Respondent has no such rights or legitimate interests. See
G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
However, we will nonetheless examine the record, in consideration of the factors listed in Policy ¶ 4(c), to determine if there is any basis for concluding that Respondent has such rights or interests.
We begin by observing that there is no evidence in the
record to suggest that Respondent is commonly known by the <bloomberg-s.com> domain name. Moreover, Complainant asserts, and Respondent
does not deny, that it has not granted Respondent license to use its BLOOMBERG mark. And we note that the pertinent WHOIS
information lists Respondent as “Oleg G. Verin.” Therefore, we conclude that Respondent has
not established rights to or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Respondent may also prove it has rights or legitimate
interests in the disputed domain name by showing that it is being used in
connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The undisputed evidence in the record before
us indicates that the domain name is being used to direct Internet users to a
site called “Bloomberg Strategies” which claims to offer financial information
and consulting services. Respondent is thus
using Complainant’s BLOOMBERG mark to directly
compete with Complainant’s business.
This is not a use which establishes rights to or legitimate interests in
the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
Finally in this connection, we take note of Complainant’s allegation to the effect that the website resolving from the disputed domain name places a ® (for registered trademark) after the “Bloomberg Strategies” title. This suggests that Respondent is attempting to pass itself off as Complainant. Such a use of the contested domain does not establish that Respondent has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that where a respondent attempts to pass itself off as a complainant online, in a blatant unauthorized use of that complainant’s mark, that conduct is evidence that that respondent has no rights to or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007): “Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We have already concluded that Respondent is using the
disputed domain name to divert Internet users who are seeking Complainant’s
online presence to its own website.
Internet users may become confused as to Complainant’s possible sponsorship
of or affiliation with the resulting website.
We infer from this that Respondent is attempting to profit from such
confusion either by offering competing financial services or by passing itself off
as Complainant. This is evidence of bad
faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat.
Finally under this heading, Respondent’s attempt to use the contested domain name to pass itself off as Complainant also demonstrates bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding bad faith where a respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that a complainant endorsed and sponsored that respondent’s website).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <bloomberg-s.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 19, 2009
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