Bloomberg Finance L.P. v. Above.com Domain Privacy
Claim Number: FA1307001507869
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergfutures.com>, registered with Above.com Pty 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2013; the National Arbitration Forum received payment on July 2, 2013.
On July 3, 2013, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bloombergfutures.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 July 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@bloombergfutures.com. Also on July 9, 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 August 1, 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.
1. Complainant owns the BLOOMBERG mark through its registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,736,744, registered July 15, 2003).
2. Complainant owns the BLOOMBERG mark through numerous trademark registrations with agencies throughout the world, such as the Korean Intellectual Property Office (“KIPO”) (e.g., Reg. No. 389,612, registered January 5, 1998).
3. Complainant uses the mark to provide global financial news, data and related goods and services. Complainant has used the name in the United States and around the world since 1981.
4. Complainant’s substantial advertising and promotion of the mark has created significant goodwill and consumer recognition around the world, such that Complainant has become a trusted source of financial data, news, and analysis.
5. The <bloombergfutures.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark as the only variance is the additions of the term “futures,” and the generic top-level domain (“gTLD”) “.com.”
6. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information, which indicates that “Above.com Domain Privacy / Shu Lin” is the registrant of the domain. Further, Complainant has not licensed or otherwise permitted Respondent to use the mark.
7. Respondent is not using the disputed domain in connection with any bona fide offering of goods and services, or making any legitimate noncommercial or fair use of the disputed domain. Respondent uses the disputed domain name to provide advertising links for third-party financial and stock websites.
8. Respondent registered the <bloombergfutures.com> domain name in bad faith as Respondent was aware of Complainant’s mark before registering the domain. It is unlikely that Respondent would have registered the domain name without knowing the reputation and goodwill associated with the BLOOMBERG mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Bloomberg Finance L.P., owns the BLOOMBERG mark through its registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,736,744, registered July 15, 2003) and through numerous trademark registrations with agencies throughout the world, such as the Korean Intellectual Property Office (“KIPO”) (e.g., Reg. No. 389,612, registered January 5, 1998). Complainant uses the mark to provide global financial news, data and related goods and services.
Respondent, Above.com Domain Privacy, registered the disputed domain name on March 30, 2008. Respondent uses the disputed domain name to provide advertising links for third-party financial and stock 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’s numerous trademark registrations throughout the world establishes Complainant’s rights in the BLOOMBERG mark pursuant to Policy ¶ 4(a)(i). Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <bloombergfutures.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i) as the only variance between the mark and the domain name are the additions of the term “futures”, and the gTLD” “.com”. The mere addition of a descriptive term is insufficient to distinguish the domain name from the mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Additionally, the affixation of a gTLD to a domain name is irrelevant for Policy ¶ 4(a)(i) analysis because gTLDs are a required element of every domain name. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
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).
The WHOIS record identifies “Above.com Domain Privacy / Shu Lin” as the registrant of the disputed domain. Complainant contends that it has not licensed or otherwise permitted Respondent to use the mark. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent uses the disputed domain name to provide advertising links of third-party financial and stock websites related to Complainant’s business. Therefore, Respondent is not using the disputed domain in connection with any bona fide offering of goods and services under Policy ¶ 4(c)(i), or making any legitimate noncommercial or fair use of the disputed domain under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services industry-related to the complainant’s legitimate business).
Respondent registered the <bloombergfutures.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) as Respondent was aware of Complainant’s mark before registering the domain. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <bloombergfutures.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 8, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page