national arbitration forum

 

DECISION

 

Bloomberg Finance L.P. v. SPC Group LLC.

Claim Number: FA1302001483218

PARTIES

Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA.  Respondent is SPC Group LLC. (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bloombergscreenshots.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2013; the National Arbitration Forum received payment on February 1, 2013.

 

On February 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bloombergscreenshots.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2013 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@bloombergscreenshots.com.  Also on February 8, 2013, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March13, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant made the following contentions.

  1. Policy ¶ 4(a)(i)

The disputed domain name is identical or confusingly similar to the Complainant’s BLOOMBERG mark.

 

  1. Policy ¶ 4(a)(ii)

 

Respondent has no rights or legitimate interests in respect of the domain name;

 

 

  1. Policy ¶ 4(a)(iii)

The domain name has been registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1. Complainant is a United States company that is one of the largest providers of global financial news and data and related goods and services and recognized and trusted worldwide as a leading source of financial information and analysis.

2. Complainant has rights for the BLOOMBERG mark by way of United States Patent & Trademark Office (“USPTO”) trademark registrations.  See Reg. No. 2,736,744 registered on July 15, 2003. Complainant also has trademark rights in BLOOMBERG by means of numerous registrations in other countries.

3.  Respondent registered the disputed domain name  on November 2, 2012  and used it originally for a website from which it sold Complainant’s copyrighted content without right or license and then retained it without having it resolve to an active website;

 

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

The first question is whether Complainant has rights in a trademark or a service mark. Complainant claims that it has rights for the BLOOMBERG mark by way of USPTO trademark registrations.  See Reg. No. 2,736,744 registered on July 15, 2003.  The Panel also notes that Complainant has attached copies of other trademark registrations that it holds in various countries and although they are not translated into English the Panel accepts that they are a true record and prove the respective trademark registrations.  Accordingly, the Panel finds that Complainant has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

The second question is whether the disputed domain name is identical or confusingly similar to the BLOOMBERG mark. Complainant contends that Respondent’s <bloombergscreenshots.com> domain name is confusingly similar to the BLOOMBERG mark.  Complainant states that Respondent has merely added the phrase “screenshots” to the BLOOMBERG mark to make the domain name.  The Panel notes that Respondent additionally included the mandatory generic top-level domain “.com,” but the Panel agrees that this mandatory addition to the domain name is irrelevant for present purposes.  See 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 concludes that the addition of the term “screenshots” does nothing to clear up the domain name’s confusion but rather it infers that the domain name and any website to which it leads will deal with screenshots carrying financial information disseminated by Complainant. Therefore the Panel finds that the <bloombergscreenshots.com> domain name is confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that 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 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s BLOOMBERG trademark and to use it in its domain name , adding only the generic word “screenshots”, thus leaving the internet user with the impression that the domain name is associated with Complainant and relates to screenshots of financial information disseminated by Complainant, thus enhancing the confusing similarity between the domain name and the trademark;

(b)  Respondent has then decided, first, to use the domain name to sell Complainant’s copyrighted content without right or license and then to retain it but not to have it resolve to an active website;

(c)  Respondent has engaged in these activities without the consent or approval of Complainant;

(d)  Complainant claims that there is no evidence that suggests that Respondent is commonly known by the BLOOMBERG mark, as illustrated by the WHOIS information.  The Panel notes that the WHOIS information lists “SPC Group LLC.” as the registrant of the <bloombergscreenshots.com> domain name.  The Panel concludes that Respondent is therefore not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise.  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);

(e)  Complainant argues that Respondent has not made a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.  Complainant claims that the domain name has been used to sell Complainant’s copyrighted content without right or license. Complainant has provided correspondence wherein Respondent agreed to remove all of the domain name’s content without transferring the domain name.  See Complainant’s Ex. I.  As the Panel agrees with Complainant’s assertions regarding the use of this domain name, it agrees that the unauthorized resale of Complainant’s content is not a Policy ¶ 4(c)(i) bona fide offering of goods and services, nor is it a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

Complainant argues that Respondent seeks to confuse Internet users into believing that Complainant is the source of the content on the domain name in order to generate commercial revenue. The record does reflect that Respondent determined it would remove infringing content from its domain name but subsequently it passively held onto the domain name.  See Complainant’s Ex. H.  As the Panel believes Complainant’s assertions regarding the content of the website’s  to which the domain  name resolves, it agrees that Respondent’s behavior illustrates Policy ¶ 4(b)(iv) bad faith use and registration by way of confusing Internet users into believing they were doing business with Complainant.  See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).

 

Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG mark.  Complainant contends that this is illustrated by the fact that Respondent used the BLOOMBERG mark in its attempt to solicit Complainant’s copyrighted materials.  The Panel notes that in correspondence between the parties Respondent informed Complainant that Respondent got the idea to solicit Complainant’s own materials via the advice of third-party websites, but when Complainant requested the transfer of the domain name Complainant declined to do so. See Complainant’s Ex. H.  The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <bloombergscreenshots.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BLOOMBERG mark, adding to it the word “screenshots” and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bloombergscreenshots.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  March 20, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page