Bloomberg Finance L.P. v. Erich Reinecker
Claim Number: FA1211001469568
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Erich Reinecker (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergpower.com>, registered with 1 & 1 INTERNET AG.
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.
HECTOR ARIEL MANOFF as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2012; the National Arbitration Forum received payment on November 5, 2012.
On November 5, 2012, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <bloombergpower.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 November 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2012 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@bloombergpower.com. Also on November 6, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on November 26, 2012.
A timely additional submission was received from Complainant and determined to be complete on November 30, 2012.
On December 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed HECTOR ARIEL MANOFF 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant alleges use of the BLOOMBERG mark for the provision of worldwide financial news and data and related goods and services.
2. Complainant owns trademark registrations for BLOOMBERG in Chile, Czech Republic and South Korea since at least 2003 and its subsidiary, Bloomberg Finance One L.P. owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BLOOMBERG mark (e.g. Reg. No. 2,736,744 registered July 15, 2003) and for BLOOMBERG POWERMATCH as from 2000.
3. Complainant owns <bloomberg.com> since 1993, <bloombergpowermatch.com> since 1999, <bloombergenergy.com> since 1999 and <bloombergnewenergy.com> since 2009. Complainant alleges also to be the owner of over 1,000 other domain names incorporating the word “bloomberg”.
4. Complainant argues to be the owner and bona fide senior user of the “Bloomberg” trade name and to be in business through its corporate parent, Bloomberg L.P., since 1981.
5. Respondent registered the <bloombergpower.com> domain name on September 25, 2012 and it is confusingly similar to Complainant’s BLOOMBERG mark since it incorporates the BLOOMBERG mark and adds only the descriptive term “power.”
6. The disputed domain name redirects visitors to <energygoldrush.com/cazenergy>, where Respondent sells energy from Ambit Energy.
7. Respondent is not commonly known by the <bloombergpower.com> domain name.
8. Complainant has not licensed or otherwise permitted Respondent’s use of its BLOOMBERG mark in connection with any domain name incorporating its mark.
9. Respondent has not provided any evidence that “Feminina Bloomberg” has ever authorized Respondent to register the disputed domain name on her behalf, that such person is an independent consultant selling “power,” or that such person even exists.
10. Complainant argues that Respondent demanded from Bloomberg Finance L.P. a “compensation” in exchange for the transfer of the domain, and that Complainant responded by offering to cover Respondent’s out-of-pocket costs associated with registering and transferring the domain; the offer was not answered.
11. Complainant argues to have created significant goodwill and consumer recognition around the world with respect to BLOOMBERG trademark and that it has gained secondary meaning and is one of the most well-known trademarks in the world.
12. Complainant alleges that the strong reputation and high profile presence of Complainant's BLOOMBERG mark lead to the inescapable conclusion that Respondent was aware of Complainant’s mark before registering the disputed domain name.
B. Respondent
1. Respondent registered the <bloombergpower.com> domain name on behalf of “Feminina Bloomberg” of Jersey City, New Jersey.
2. Ms. Bloomberg chose this domain name because her last name is Bloomberg, and she is reselling power as an independent Ambit sales consultant.
3. Respondent’s registration of the disputed domain name on behalf of Ms. Bloomberg was not a “blatant attempt to garner goodwill and recognition,” but rather was a logical combination of Ms. Bloomberg’s name and the products she resells.
4. Ms. Bloomberg feels the Complainant is preventing her from using her name in this or future domain names.
5. Complainant’s failure to initially acquire the disputed domain name, coupled with Complainant’s refusal to make a “market based offer for the domain and avoid further legal expenses,” suggests that Complainant is to blame for the current situation.
6. Respondent registered the disputed domain name solely for the benefit of Ms. Bloomberg, and makes no claim itself in the disputed domain.
7. The contested domain name’s current resolution to Respondent’s own business is only temporary, and the domain will resolve to Ms. Bloomberg’s own site once she has built her business.
8. Complainant’s mark is well known but it is not enough to place claim to all related domain names.
9. Ms. Bloomberg would accept to transfer the domain name for $ 10,000.
C. Additional Submissions
Complainant
1. Respondent’s Response should be disregarded because it fails to comport with the Rules for Uniform Domain Name Dispute Resolution Policy.
2. Respondent failed to provide any evidence to support his contention that the domain was registered on behalf of an individual named “Femina Bloomberg” or that such person even exists or has authorized Respondent to represent her in this action.
3. Complainant alleges that Respondent is capitalizing on the goodwill and global reputation associated with Complainant’s mark by driving traffic from <bloombergpower.com> to its own energy selling website.
4. Complainant alleges that it did not receive an answer to the offer regarding the reimbursement for the costs associated with registering and transferring the domain and that then the Respondent demanded $ 10,000. Complainant argues that Respondent’s bad faith was demonstrated by his demand for payment beyond the expenses incurred.
Complainant, Bloomberg Finance, LP, provides worldwide financial news and data and related goods and services related to energy with the trademark BLOOMBERG which was registered in several countries at least as from 2003 but claims that it had been using the mark as from 1981. The Complainant also owns BLOOMBERG POWERMATCH and several domain names including <bloomberg.com> and <bloombergpowermatch.com> and <bloombergenergy.com>.
Respondent registered the <bloombergpower.com> domain name in 2012 and argued to have done it on behalf of “Feminina Bloomberg” of Jersey City, New Jersey. The contested domain name redirects to Respondent’s own business.
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."
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 submitted evidence to prove trademark rights for BLOOMBERG in Chile, Czech Republic and South Korea since at least 2003. It also filed evidence to prove that its subsidiary, Bloomberg Finance One L.P. owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BLOOMBERG mark (e.g. Reg. No. 2,736,744 registered July 15, 2003) and for other trademarks that include BLOOMBERG plus other words, such us BLOOMBER POWERMATCH (Exhibit B).
Previous panels have agreed that registration of a mark with a federal trademark authority like the USPTO is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Accordingly, the Panel holds that Complainant has successfully established its rights in the BLOOMBERG mark under Policy ¶ 4(a)(i).
In addition, the Panel finds that <bloombergpower.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark and BLOOMBERG POWERMATCH mark under Policy ¶ 4(a)(i) since it contains Complainant’s mark, adding the term “power” and the generic top-level domain (“gTLD”) “.com.” This Panel holds that neither the addition of a term which is descriptive of Complainant’s business, nor the affixation of a gTLD, is sufficient to distinguish the <bloombergpower.com> domain name from Complainant’s BLOOMBERG mark for the purposes of Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Moreover this Panel points out that the Complainant also owns trademark BLOOMBERG POWERMATCH, Registration No. 2,329,249 of class 36.
The Panel finds that Complainant has made 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent claims to have “acquired the domain on behalf of Feminina Bloomberg… an independent consultant reselling Ambit Energy;” however Respondent has not provided any evidence to prove that that such person exists, that she is an independent consultant selling “power,” or that Complainant has authorized Respondent to register the disputed domain name on her behalf. This Panel reviewed both Complainant and Respondent’s other correspondence which includes an e-mail from <ninaginaarciabloomberg@yahoo.com>. However, this Panel agrees with the Complainant that it proves no more than that this account existed on December 2, 2012. This Panel finds that it is neither sufficient evidence of the cited person’s existence nor of a legitimate interest in registering and using a domain name which contains Complainant’s BLOOMBERG mark.
The Panel notes that the WHOIS information on record identifies Respondent as “Erich Reinecker,” and that the name “Feminina Bloomberg” does neither appear anywhere on the website registration records nor on the Respondent’s website <energygoldrush.com/cazenergy>. On the basis of the evidence presented in the record, the Panel concludes that Respondent is not commonly known by the <bloombergpower.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel finds that Respondent’s use of the disputed domain name to redirect to a commercial site which is unrelated to Complainant’s business constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Complainant submitted evidence of the correspondence between the parties, which shows that Respondent demanded a compensation in exchange for the transfer of the domain (Exhibit I) and that Complainant offered to cover Respondent’s out-of-pocket costs associated with registering and transferring the domain” (Exhibit J). In addition, Respondent offered to surrender the domain to Complainant for the sum of $10,000. The Panel finds that Respondent’s offer to sell the disputed domain name for more than the out-of-pocket expenses Respondent incurred in registering the domain demonstrates a lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Respondent included in his Response an offer to surrender the domain to Complainant for the sum of $10,000. Accordingly, the Panel finds that Respondent’s intent to sell the disputed domain name to Complainant for an amount which exceeds Respondent’s out-of-pocket costs constitutes bad faith registration and use of the <bloombergpower.com> domain name under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant submitted evidence which shows that BLOOMBERG was considered one of the 19 most well-known trademarks in the world in 2004 (Exhibit F). Additionally Complainant contends that the strong reputation and high profile presence of Complainant's BLOOMBERG mark leads to the inescapable conclusion that Respondent was aware of Complainant’s mark before registering the disputed domain name, which this Panel finds true since Respondent expressly recognizes in his Response that “Bloomberg’s financial mark is well known.” Moreover, Complainant submitted evidence to prove it has registered <bloombergpowermatch.com> since 1999, <bloombergenergy.com> since 1999 and <bloombergnewenergy.com> since 2009. Moreover, there is also evidence about a trademark registration for BLOOMBERG POWERMATCH in 2000. In addition, Complainant submitted evidence to prove that Bloomberg Finance L.P. has developed activities in the field of energy. Thus, the Panel finds that Respondent had actual knowledge of Complainant's rights in the BLOOMBERG mark prior to registering the disputed domain name and therefore Respondent’s actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
In addition, the Panel concludes that Respondent has not submitted evidence to prove rights or legitimate interests in the <bloombergpower.com> domain name pursuant to Policy ¶ 4(a)(ii). Moreover, the disputed domain name is completely included in the one registered by the Complainant (<bloombegpowermatch.com>).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergpower.com> domain name be TRANSFERRED from Respondent to Complainant.
HECTOR ARIEL MANOFF, Panelist
Dated: December 21, 2012
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