Bloomberg Finance L.P. v. Eric Zhao / Bloomberga
Claim Number: FA1011001360293
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Meghan M. Hungate of Willkie Farr & Gallagher LLP, New York, USA. Respondent is Eric Zhao / Bloomberga (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloomberga.com>, <bloomberga.net>, and <bloomberga.org>, registered with Hichina Zhicheng Technology Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2010; the National Arbitration Forum received payment on November 24, 2010. The Complaint was submitted in both Chinese and English.
On November 24, 2010, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <bloomberga.com>, <bloomberga.net>, and <bloomberga.org> domain names are registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bloomberga.com, postmaster@bloomberga.net, and postmaster@bloomberga.org. Also on December 6, 2010, the Chinese language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 Chinese 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bloomberga.com>, <bloomberga.net>, and <bloomberga.org> domain names are confusingly similar to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or legitimate interests in the <bloomberga.com>, <bloomberga.net>, and <bloomberga.org> domain names.
3. Respondent registered and used the <bloomberga.com>, <bloomberga.net>, and <bloomberga.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bloomberg Finance L.P., operates a financial news and information business. Complainant conducts its business under the BLOOMBERG mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744 issued July 15, 2003).
Respondent, Eric Zhao, registered the <bloomberga.com>, <bloomberga.net> and <bloomberga.org> disputed domain names on September 2, 2008. The disputed names resolve to websites that closely resemble websites of Complainant.
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.
Complainant provides evidence of its registration of the BLOOMBERG mark with the USPTO (e.g., Reg. No. 2,736,744 issued July 15, 2003). Evidence of a trademark registration allows the Panel to find rights in the mark and satisfaction of the requirements outlined in Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <bloomberga.com>, <bloomberga.net>, and <bloomberga.org> disputed domain names are confusingly similar to Complainant’s BLOOMBERG mark. Complainant asserts that previous panels have found that adding letters and a generic top-level domain (“gTLD”) to a mark are insufficient and does not result in a unique domain name. Respondent’s disputed domain names each add the letter “a” to Complainant’s mark as well as a gTLD, which Complainant alleges does not result in domain names that are distinguishable from Complainant’s mark. The Panel finds Respondent’s domain names to be confusingly similar to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“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).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Policy ¶ 4(a)(i) has been established.
According to Policy ¶ 4(a)(ii), Complainant possesses the burden of showing that Respondent lacks rights or legitimate interests in a disputed domain name. After Complainant has made a prima facie showing in support of its allegations, the burden shifts to Respondent to provide information that it in fact has rights or legitimate interests in the disputed domain name under ¶ 4(c) of the Policy. The Panel finds that Complainant has made a prima facie showing and that because Respondent failed to make a timely response, the Panel may accept Complainant’s allegations that Respondent lacks rights and legitimate interests in the disputed domain names as true. Additionally, the Panel will examine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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’s assertion that Respondent is not commonly known by any of the disputed domain names has gone uncontradicted by Respondent. The WHOIS information lists the name of the domain name registrant as “Eric Zhao /,Bloomberga.” However, without further evidence to support the similarities between the WHOIS information and the disputed domain names, the Panel finds that Respondent is not commonly known by any of the <bloomberga.com>, <bloomberga.net>, and <bloomberga.org> disputed domain names under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant alleges that Respondent utilizes the disputed domain names to resolve to websites that closely resemble Complainant’s own website. Much of the information found on Complainant’s website can be found on the websites resolving from the disputed domain names. The Panel presumes that Respondent benefits from the websites and finds that using Complainant’s mark and the recognition surrounding that mark as a means of attracting Internet users to websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith. Respondent’s domain names and resolving websites closely resemble those of Complainant and Complainant asserts that many of the same names and logos from its website can also be found on the websites posted on Respondent’s disputed domain names. Complainant alleges that the resemblance between the websites creates confusion among Internet users looking for Complainant’s financial news services and that Respondent benefits financially from this confusion. The Panel is left to presume that Respondent registered the disputed domain names in order to profit from the disputed domain names and resolving websites. The Panel finds the aforementioned to be evidence of bad faith registration and use and given Complainant’s established rights in the mark, the Panel supports a finding 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 in question is obviously connected with the 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 the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant further contends that Respondent is attempting to pass itself off as Complainant through its use of the disputed domain names. The Panel determines that this is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<bloomberga.com>, <bloomberga.net>, and <bloomberga.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 7, 2011
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