Bloomberg Finance L.P. v. SEVA Company
Claim Number: FA0909001282903
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Fara S. Sunderji, of Willkie Farr & Gallagher LLP, New York, USA. Respondent is SEVA Company (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergrealty.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2009.
On September 4, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bloombergrealty.com> domain name is registered with Godaddy.com, Inc. and that the 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 September 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2009 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 1, 2009.
An Additional Submission was received from Complainant on October 5, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
Respondent Responded to Complainant’s Reply on October 5, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On October 7, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
This Complaint is based upon the trademark and service mark BLOOMBERG. Bloomberg Finance One L.P., a wholly owned subsidiary of Complainant, who has obtained registrations for BLOOMBERG and at least thirty-six (36) trademarks and service marks containing the word BLOOMBERG in the United States. Bloomberg has been in continuous use and its predecessor in interest since its registration in 1993. In addition, Bloomberg owns over 1,000 other domain names incorporating the word “Bloomberg,” including many defensive registrations of marks spelling “Bloomberg” incorrectly.
Complainant asserts that it is likely an Internet user would mistakenly believe that a website accessible by the ULR <bloombergrealty.com> is affiliated with Complainant because the addition of the generic word “realty” “does not add any distinguishing features to the mark, and does not render the mark any less recognizable.” Respondent’s registered domain name is confusingly similar to Complainant’s Marks and Domain Names.
Complainant has not licensed or otherwise permitted Respondent or its predecessors in interest to use Complainant’s Marks or any of Complainant’s Family of Marks, nor has Complainant licensed or otherwise permitted its use.
Respondent denies that Respondent’s <bloombergrealty.com> domain name is confusingly similar to Complainant’s mark, BLOOMBERG. Respondent’s domain name is distinguished from Complainant’s name in that none of the letters in the domain name is capitalized, and additionally, Respondent’s domain name adds to the name “realty.com”. The <bloombergchannel.com> domain name is clearly confusingly similar to that of Complainant which is in the news business on various media channels, whereas Respondent’s domain name clearly indicates that Respondent’s business is “realty” which is distinguished from Complainant’s business of financial news and information and related goods and services. Respondent’s domain name in no way suggests any relationship with Complainant’s business of financial news and information and related goods and services. Respondent, who has been a licensed real estate broker since 1988, decided on the name Bloomberg Realty, Inc. many years ago when both of her children were quite young and her name was also Bloomberg. The <bloombergrealty.com> domain name was not a reserved name and was the logical domain name for the business, Bloomberg Realty, Inc. Complainant asserts “that it is likely an Internet user would mistakenly believe that a website accessible by the URL <bloombergrealty.com> is affiliated with Complainant.” However, Complainant makes no allegation that any information derived from Respondent’s website would confuse an Internet user for that of Complainant or Complainant’s business. Upon accessing Respondent’s website, an Internet user would clearly recognize that the website is that of a very small, real estate sales firm located in a very small town in Massachusetts, and not that of the enormous international business of Complainant. Moreover, Respondent has been in business as Bloomberg Realty, Inc. since February, 2008 and no one has ever confused this small, real estate firm located and doing business exclusively in Berkshire County, Massachusetts with Bloomberg L.P. Respondent’s website includes a real estate newsletter, as is typical of many real estate firms. Its sole purpose is to provide information to the firm’s real estate client, almost exclusively individual consumers, on what is happening with local, state, and national real estate as it affects their sale or purchase of their property. Wherever appropriate, the sources of this information are noted on the website, and such sources have never been that of Complainant. Further, on Complainant’s website, all real estate matters are news items, rather than offering real estate sales services, which is the case with Respondent.
C. Additional Submissions
Bloomberg provides extensive real estate business services. Beyond the real estate news and information provided through Bloomberg.com, Bloomberg and its affiliates offer an array of real estate market data and analysis through the BLOOMBERG PROFESSIONAL® products and services. Bloomberg also provides comprehensive information and analysis regarding home and business mortgages and other financing.
Respondent is a company called “SEVA Company,” which clearly has no surname. Nancy Shulman in the Respondent, Response at ¶5(b)(2), it remains undisputed that this principal’s family name is not “Bloomberg.” Respondent’s principal changed her name to “Shulman” and carries on her real estate business under the name Nancy L. Shulman.
Respondent has provided no evidence that its principal currently represents herself or is known by the “Bloomberg” surname.
Respondent states that Ms. Shulman’s “real estate licenses were issued both in New Hampshire and Massachusetts under the name Nancy L. Bloomberg.” ¶5(b)(2), accord ¶¶5(a) and 5(b)(5).
Complaint’s reply to Respondent’s Submission claims that Bloomberg Finance L.P. provides international financial news information in furtherance of its purpose as a news service provider. On the contrary, Bloomberg Realty, Inc. is a small real estate firm engaged in the purchase and sale of real estate in a very limited geographic area in rural Massachusetts. The real estate news provided on the Complainant’s website is located four levels down on the Bloomberg.com website and provides statistical information to its readers. Unlike Bloomberg Realty, Inc, Complainant does not handle the purchase and sale of real estate and certainly does not target its information to the Berkshire County, Massachusetts market.
The Respondent does not trade under the name “SEVA Company;” on the contrary, Respondent’s business is known exclusively as Bloomberg Realty, Inc. The Complainant has filed its complaint against SEVA Company as Respondent, which was a name chosen, but never registered, in 2001 by the Respondent for a business entity which was not subsequently used. Respondent does not know how the current <bloombergrealty.com> domain name, was associated with SEVA, a company that the Respondent does not own nor is there any affiliation. The name was originally provided to Register.com and without the Respondent’s knowledge, was passed on to GoDaddy.com by the Respondent’s web creator and host.
Respondent’s birth name is “Shulman,” but Respondent’s married name was “Bloomberg” and “Bloomberg” is the family name of both of Respondent’s sons and their extended family for many generations is “Bloomberg.” Respondent Nancy L. Bloomberg was licensed in State of New Hampshire as a real estate Agent in 1986 and as a real estate Broker in 1988. Respondent Nancy L. Bloomberg was licensed in the Commonwealth of Massachusetts on January 25, 2002, per the Real Estate Licensing Board in the Commonwealth of Massachusetts.
Finding for the Respondent.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent contends that the <bloombergrealty.com> domain name is not confusingly similar to Complainant’s BLOOMBERG mark because the term “realty” is not related to Complainant’s financial news and information goods and services. The Panel agrees and finds that the <bloombergrealty.com> domain name is not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Prudential Ins. Co. of Am. v. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) (holding that the <prudentialmotors.com> domain name, which incorporated the PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to the complainant or the insurance and financial industry and was thus not confusingly similar to the complainant’s mark); see also Amazon.com, Inc. v. Integration Unlimited, Inc., FA 183725 (Nat. Arb. Forum Sept. 25, 2003) (finding the <amazonallergy.com> domain name was not confusingly similar to the complainant’s AMAZON.COM mark because the additional term “allergy” bore “little to no actual relationship with the activities performed under Complainant's AMAZON.COM mark”).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark; therefore, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent contends that it is using the <bloombergrealty.com> domain name to offer its real estate services. The Panel agrees and finds that Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services).
Respondent argues that “Bloomberg” is a family name, her sons’ last name and her former last name, and that Respondent is using the disputed domain name in a legitimate manner. Respondent further argues that Respondent has been known by the “Bloomberg” name for many years in the real estate business. The Panel agrees with Respondent’s arguments and finds that Respondent is commonly known by the <bloombergrealty.com> domain name under Policy ¶ 4(c)(ii). See G.A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that a person who registers a variant of their full name has rights and legitimate interests in the domain name); see also Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent has rights or legitimate interests in the <bloombergrealty.com> domain name pursuant to Policy ¶ 4(a)(ii). The Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent asserts she did not register the disputed domain name in bad faith, but rather registered the disputed domain name to use in connection with a real estate business as “Bloomberg” was formerly her last name and remains her family members’ last name. The Panel further finds that Respondent has not registered or used the <bloombergrealty.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon Nelson A. Diaz (ret.), Panelist
Dated: October 23, 2009
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