Bloomberg Finance L.P. v. Carlos Slim
Claim Number: FA1309001517719
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Carlos Slim (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergtower.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 4, 2013; the National Arbitration Forum received payment September 4, 2013.
On September 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bloombergtower.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@bloombergtower.com. Also on September 4, 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 October 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. No evidence suggests that the Respondent currently listed on the WHOIS record is commonly known by the BLOOMBERG name.
ii. Respondent is using the domain name to provide advertising links to third-party websites.
i. Respondent’s demand for payment in exchange for the transfer of the domain is further evidence of bad faith.
ii. Respondent was aware of Complainant’s marks before registering the domain name.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the domain name containing Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant contends that it has become one of the largest providers of global financial news and data and related goods and services and is recognized and trusted worldwide as a leading source of financial information and analysis. Complainant argues that it is the owner of trademark registrations with the USPTO for the BLOOMBERG mark (e.g., Reg. No. 2,736,744, registered July 15, 2003). See Exhibit B. The Panel notes that Respondent appears to reside in Pakistan. However, the Panel finds that it is irrelevant under Policy ¶ 4(a)(i) whether or not a Complainant has registered its mark in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, the Panel finds that Complainant has sufficiently demostrated rights in the BLOOMBERG mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <bloombergtower.com> domain name fully incorporates the BLOOMBERG mark and adds only the word “tower.” The Panel finds that Respondent’s addition of a generic word to Complainant’s mark does not distinguish a name but creates one that is confusingly similar to the protected mark under a Policy ¶ 4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in Respondent’s <bloombergtower.com> domain name. The Panel finds that Respondent’s inclusion of a gTLD to Complainant’s mark in a domain name is irrelevant to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <bloombergtower.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have rights to 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.”).
Complainant argues that no evidence suggests that the Respondent currently listed on the WHOIS record is commonly known by the BLOOMBERG name. The Panel notes that the WHOIS information identifies “Carlos Slim” as the registrant of the <bloombergtower.com> domain name. See Exhibit E. Complainant contends that it has not licensed or otherwise permitted Respondent to use Complainant’s marks or any of Complainant’s family of marks, and that it has not licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Accordingly, the Panel finds that Respondent is not commonly known by the <bloombergtower.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <bloombergtower.com> domain name to provide advertising links to third-party websites. The Panel observes that Respondent’s disputed domain name links to a website that provides unrelated links titled “Experienced Architects,” “James A Prisco Architect,” “Commercial Painters,” and others. See Exhibit G. Prior panels have held that a respondent’s use of a complainant’s mark in a domain name that contains unrelated hyperlinks does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 unrelated to the complainant). Consequently, this Panel finds that Respondent is not using the <bloombergtower.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent’s demand for payment in exchange for the transfer of the domain is further evidence of bad faith. The Panel notes that on August 7, 2013, Respondent responded to an e-mail from Complainant stating: “I am ready to sale this domain name and transfer it to you by <flippa.com> and I am also agree to provide written that I will never use this name. . . . Please give me your price to sale this domain.” (errors in original). See Exhibit I. The Panel observes that Complainant responded to Respondent on August 15, 2013, stating: “Bloomberg will not purchase the domain from you.” Id. The Panel notes that Respondent responded to Complainant August 15, 2013, in an almost unreadable sentence suggesting it was costing money and words that could be interpreted as an offer to transfer. Id. Prior panels have held that a respondent’s use of a domain name for the purpose of selling it to a complainant evidences bad faith use and registration. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Thus, the Panel finds that Respondent is using the <bloombergtower.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant alleges in its Policy ¶ 4(a)(ii) section that Respondent uses the <bloombergtower.com> domain name to provide advertising to third-party websites. The Panel notes that Complainant does not specifically allege that Respondent makes a financial gain by hosting advertisements; however, the evidence permits the Panel to make an inference that third parties pay a fee in order to place advertisements at the website and that Respondent receives the profit. The Panel therefore finds that Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv) are evident, due to use of a confusingly similar domain name to divert Internet users to the resolving website and finding the making of a commercial gain as a result. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Complainant asserts that Respondent was aware of Complainant’s marks before registering the domain name. Complainant argues that it has a strong reputation and a high-profile presence in the financial and media sectors, and that it is the subject of substantial consumer recognition and goodwill. Complainant contends that the <bloomberg.com> domain name was registered by Complainant September 29, 1993, and has been in continuous use since 1993. Complainant claims that such facts inescapably lead to the conclusion that Respondent was aware of Complainant’s marks before registering the domain name. Although panels have not generally regarded constructive notice sufficient for a finding of bad faith, the Panel finds here, due to the fame of Complainant’s mark and Respondent’s use of it, that Respondent had actual knowledge of Complainant's mark and rights and therefore the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); see also 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 respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergtower.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 15, 2013.
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