Bloomberg Finance L.P. v. Vicky Kolodjski
Claim Number: FA1307001509463
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York, USA. Respondent is Vicky Kolodjski (“Respondent ”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergc.info>, registered with 1&1 Internet AG.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2013; the National Arbitration Forum received payment on July 12, 2013.
On July 15, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <bloombergc.info> 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 July 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@bloombergc.info. Also on July 18, 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 14, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following allegations:
i. Complainant owns the BLOOMBERG mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003), as well as through numerous international trademark agencies, including the Korean Intellectual Property Office (“KIPO”) (e.g., Reg. No. 389,612, registered January 5, 1998). See Complainant’s Exhibits B and A.
ii. Complainant uses the BLOOMBERG mark in connection with goods and services relating to electronic trading, financial news, and information businesses. Since the adoption of the BLOOMBERG name in 1987, Complainant’s mark has become one of the largest providers of global financial news and data and related goods and services.
iii. Complainant has garnered wide recognition for high quality financial data, news and analysis. Complainant’s BLOOMBERG mark was identified as the 19th most well-known mark in the world in the April 2004 issue of Trademark World. See Complainant’s Exhibit G.
iv. Complainant has used the <bloomberg.com> domain name since 1993.
i. Policy ¶ 4(a)(i)
1. The <bloombergc.info> domain name is confusingly similar to the BLOOMBERG mark as the domain name fully incorporates the mark and adds only the letter “c.”
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the BLOOMBERG name. Further, Complainant has not licensed or otherwise permitted Respondent to use the mark.
2. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The domain name does not point to any functioning website. The website includes only the phrase “Future home of something quite cool.” See Complainant’s Exhibit H.
iii. Policy ¶ 4(a)(iii)
1. Respondent registered and used the disputed domain name in bad faith because Respondent was aware of Complainant’s mark before registering the domain name and because of all the circumstances including the use of a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a very prominent and successful United States company engaged in electronic trading, financial news, and information businesses.
2.Complainant owns the BLOOMBERG mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003), as well as through numerous international trademark agencies, including the Korean Intellectual Property Office (“KIPO”) (e.g., Reg. No. 389,612, registered January 5, 1998).
3. Respondent registered the disputed domain name on January 8, 2013.
4. The domain name resolves to a website that includes only the phrase “Future home of something quite cool.”
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.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLOOMBERG mark. Complainant argues that the <bloombergc.info> domain name is confusingly similar to the BLOOMBERG mark, as the domain name fully incorporates the mark and adds only the letter “c.” Previous panels have held that the addition of a single letter to a complainant’s mark increases, rather than decreases confusing similarity. 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 Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ). Further, the Panel notes that the domain name differs from the name in that the domain name includes the generic top-level domain (“gTLD”) “.info.” Previous panels have consistently held that the affixation of a gTLD is irrelevant for purposes of the Policy ¶ 4 (a) (i) analysis because a gTLD is a requirement for any domain name. See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“). As such, the Panel finds that the <bloombergc.info> domain name is confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
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, making only the slight spelling alteration of adding the letter “c”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name to resolve to a website that carries only the phrase “Future home of something quite cool”;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends that Respondent is not commonly known by the BLOOMBERG name. The Panel notes that the WHOIS record identifies “Vicky Kolodjski” as the registrant of the disputed domain name. Further, Complainant contends that it has not licensed or otherwise permitted Respondent to use the mark. The Panel notes that the Respondent has failed to submit a Response, and therefore has not refuted Complainant’s contentions. The Panel finds that as a result of the WHOIS information, and Complainant’s contention that Respondent lacks permission to use the BLOOMBERG mark, Respondent is not commonly known by the disputed domain name pursuant to 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e)Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant alleges that the domain name does not resolve to any functioning website. Complainant notes that the website merely includes the phrase “Future home of something quite cool.” See Complainant’s Ex. H. The Panel agres that such use does not constitute an active use of the domain name, and therefore find that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(I) and (iii), respectively. See Bloomberg L.P. v. SC Media Serves. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”)
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.
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.
First, the Panel notes that Policy ¶ 4(b) is intended to be illustrative, rather than exclusive, and that it may therefore consider other factors in making a determination as to Respondent’s bad faith registration and use. Previous panels have found additional circumstances outside of Policy ¶ 4(b) that support a finding of bad faith. Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Secondly, Complainant argues that Respondent registered the disputed domain name in bad faith because Respondent was aware of Complainant’s mark before registering the domain name. Complainant stresses the notoriety and fame of the BLOOMBERG mark, and notes that Complainant’s <bloomberg.com> domain name has been in use since 1993. Previous panels have generally concluded that constructive notice is insufficient to support a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG mark given Respondent’s full incorporation of Complainant’s famous mark in the domain name, and thus concludes that Respondent registered the <bloombergc.info> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 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”).
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 and in view of the conduct that Respondent has engaged in when using it, 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergc.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 16, 2013
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