Michael R. Bloomberg v. Stephen Teachout
Claim Number: FA1303001491736
Complainant is Michael R. Bloomberg (“Complainant”), represented by Meghan Hungate of Willkie Farr & Gallagher LLP, New York, USA. Respondent is Stephen Teachout (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mikebloombergphilanthropy.org>, registered with GoDaddy.com, LLC.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.
On March 27, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mikebloombergphilanthropy.org> 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 March 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 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@mikebloombergphilanthropy.org. Also on March 28, 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 April 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity of Domain Names
Policy ¶ 4(a)(ii): Respondent’s Lack of Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Michael R. Bloomberg, is the founder of Bloomberg L.P. and Bloomberg Philanthropies, and current Mayor of New York City. Complainant holds the trademark to the BLOOMBERG PHILANTHROPIES mark, registered with the United States Patent & Trademark Office (“USPTO”). See Reg. No. 3,593,373 registered on Mar. 17, 2009. Complainant uses the mark to promote public awareness and seek investors for an array of charitable projects.
Complainant was first contacted by one “Mr. Robert Ray” who used the disputed domain name to host his e-mail account. Complainant later discovered that the registrant of this domain name is one “Mr. Stephen Teachout.” Respondent, registered the <mikebloombergphilanthropy.org> domain name on November 13, 2012. Respondent is using the domain name to resolve to Complainant’s official website. This creates the impression amongst Internet users that individuals using the disputed domain name in e-mail addresses are affiliated with Complainant when they are not. Respondent later claimed that they were using the domain name to monitor the web traffic of Internet users who use this disputed domain name to find Complainant’s official websites.
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.”).
Complainant notes that it is the founder of Bloomberg L.P. and Bloomberg Philanthropies, and current Mayor of New York City. Complainant claims that it holds the trademark to, registered with the USPTO. See Reg. No. 3,593,373 registered on Mar. 17, 2009. Complainant asserts that it uses the mark to promote public awareness and seek investors for an array of charitable projects. The Panel finds Complainant’s USPTO registration of the BLOOMBERG PHILANTHROPIES mark to be sufficient evidence of Policy ¶ 4(a)(i) rights. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <mikebloombergphilanthropy.org> domain name is confusingly similar to the BLOOMBERG PHILANTHROPIES mark. Complainant contends that the domain name places the mark in the plural form, and adds a commonly used short-form of Complainant’s first name “mike” to form the domain name. The domain name is actually the mark in its singular, and not plural form. Respondent also added the generic top-level domain (“gTLD”) “.com” in forming this domain name. Neither the deletion of spacing, nor addition of a gTLD are relevant under the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Merely altering a mark to read in its singular form does not take this domain name off the path of confusing similarity. See Pride Studios Inc. v. Global Access, FA 1154068 (Nat. Arb. Forum Apr. 17, 2008) (“In each case the names are identical except for the deletion of an “s” (i.e., transforming a plural reference to the singular”). The addition of the term “Mike,” is merely a reference to Complainant’s name, Micheal Bloomberg, and thus this addition enhances the confusing similarity of the domain name. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access the complainant’s website, think that an affiliation of some sort exists between the complainant and the respondent, when in fact, no such relationship would exist). Therefore the Panel finds that the <mikebloombergphilanthropy.org> domain name is confusingly similar to the BLOOMBERG PHILANTHROPIES mark under Policy ¶ 4(a)(i).
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).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s mark in domain names. Complainant notes that it was first contacted by one “Mr. Robert Ray” who used the disputed domain name to host his e-mail account. Complainant later discovered that the registrant of this domain name is one “Mr. Stephen Teachout.” Neither of these individuals have names that could be construed as the <mikebloombergphilanthropy.org> domain name. The Panel finds that Respondent is not commonly known as the disputed domain name under Policy ¶ 4(c)(ii) because Respondent has not attempted to establish a connection with the name in any way. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent is using the <mikebloombergphilanthropy.org> domain name to resolve to Complainant’s official website. Complainant believes that this creates the impression amongst Internet users that individuals using the disputed domain name in e-mail addresses are affiliated with Complainant when they are not. Respondent’s use of Complainant’s mark in this domain name, when Complainant has no control over Respondent’s use of the BLOOMBERG PHILANTHROPIES mark in its domain names, constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).
Complainant asserts that Respondent later claimed that they were using the domain name to monitoring the web traffic of Internet users who use this disputed domain name to find Complainant’s official websites. Complainant contends that it never gave Respondent any right or license to use Complainant’s registered trademarks in furtherance of any of Respondent’s tests or schemes. Complainant asserts that Respondent simply cannot claim a right or legitimate interest in amassing profits by exploiting Complainant’s mark to obtain web traffic related to Complainant. Respondent does not establish a Policy ¶ 4(a)(ii) right or legitimate interest by using this confusingly similar domain name to monitor web traffic related to Complainant. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
Complainant states that it communicated its concerns about this domain name to both Mr. Robert Ray and Mr. Stephen Teachout. Complainant offered these individuals the out-of-pocket expenses incurred in maintaining these domain names, and requested that the infringing domain names be henceforth given to Complainant. Mr. Robert Ray and Mr. Stephen Teachout both rebuffed these offers, requesting a sum of $1,100.00 for these domain names. Following Complainant’s withdrawal of the offer, Mr. Stephen Teachout informed Complainant that the domain name would be placed up for auction for $532.00 through GoDaddy.com, LLC. The Panel finds that Respondent’s demand for fees in excess of out-of-pocket expenses illustrates bad faith use and registration 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 further argues that Respondent was aware of Complainant’s rights in the mark prior to registering the domain name. Complainant first cites its national recognition and goodwill as a basis for constructive knowledge. Complainant also asserts that this is clear from the fact that Mr. Robert Ray admitted that his goal in holding this domain name was to exploit web traffic data related to Complainant. Likewise, Complainant again notes that the domain name resolves to Complainant’s own website, making it implausible for Respondent to have been without actual knowledge. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mikebloombergphilanthropy.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 10, 2013
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