Bloomberg
Finance L.P. v. Sung
Claim Number: FA0906001265735
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 <bloombergre.com>, registered with Wild West Domains, 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 May 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 1, 2009.
On June 1, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <bloombergre.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 June 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of June 22, 2009, by which Respondent could file a response to the Complaint, was transmitted by e-mail 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@bloombergre.com.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has used the BLOOMBERG mark since 1981 to provide worldwide financial news and information, as well as related goods and services.
Complainant holds numerous trademark registrations worldwide for the BLOOMBERG mark, including with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,736,744, issued July 15, 2003).
Complainant has not licensed or otherwise authorized or permitted Respondent to use Complainant’s mark to apply for or employ a domain name incorporating Complainant’s BLOOMBERG trademark.
Respondent registered the <bloombergre.com> domain name on March 5, 2004.
The domain name resolves to a website displaying the message, “contents under construction.”
Respondent’s <bloombergre.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.
Respondent is not commonly known by the <bloombergre.com> domain name.
Respondent does not have any rights to or legitimate interests in the domain name <bloombergre.com>.
Respondent registered and uses the <bloombergre.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 to 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 its BLOOMBERG mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had established rights in the BLOOMBERG mark through its registration with the United States Patent and Trademark Office); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant
has established rights in the AIG mark through registration of the mark with
several trademark authorities throughout the world, including the
The <bloombergre.com> domain name contains Complainant’s BLOOMBERG mark in its entirety followed by the letters “re” and the generic top-level domain “.com.” The addition of two indiscriminate letters to Complainant’s mark fails to distinguish the domain name from the mark. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to a complainant’s AOL mark because:
… the addition of a string of indiscriminate
letters to a famous mark in a second level domain does not differentiate the
domain name from the mark.
See also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark, but renders the resulting domain name confusingly similar to a complainant’s marks). Similarly, affixation of the generic top-level domain “.com” is insignificant for purposes of a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
Therefore, the Panel concludes that Respondent’s <bloombergre.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark under Policy ¶ 4(a)(i).
Complainant has sufficiently met its burden of producing a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, it is Respondent’s responsibility to rebut Complainant’s assertions and to provide evidence that Respondent does have rights to 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.”
Because Respondent has failed to respond to the Complaint, we may presume that Respondent has no rights to or legitimate interests in the <bloombergre.com> domain name. 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.
We will nonetheless examine the record in consideration of the factors cited in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has rights or interests cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has failed to make active use of the disputed domain name, as is indicated by the “contents under construction” message displayed on the resolving website. Therefore, we conclude 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 a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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 [failure to make an
active use] of a domain name 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 Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii)).
We also observe that Complainant contends, without objection from Respondent, both that Respondent is not commonly known by the <bloombergre.com> domain name, and that Complainant has not licensed or otherwise authorized or permitted Respondent to use Complainant’s BLOOMBERG trademark to apply for or employ a domain name incorporating that mark. Consistent with this allegation, the pertinent WHOIS information lists the registrant as “Sung Om Yun.” Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, showing that that respondent was not commonly known by the domain name there in issue, and where a complainant’s asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The considerations enumerated in Policy ¶ 4(b) are not exclusive, so that we may consider other circumstances in determining whether 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 registration and use of a domain name] 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.
In this light, we take note of the undenied allegation of the Complaint to the effect that Respondent has failed to demonstrate any intent or preparations to make active use of the domain name <bloombergre.com>. Rather, more than five (5) years after it was registered, the disputed domain name remains effectively unused, merely displaying a “contents under construction” message on the resolving website. Accordingly, we conclude that this inactive use of the <bloombergre.com> domain name establishes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000):
[I]t
is possible, in certain circumstances, for inactivity by the Respondent to
amount to the domain name being used in bad faith.
See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make an active use of a contested domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <bloombergre.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 1, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum