Bloomberg Finance L.P. v. shen chaoyong
Claim Number: FA1309001520804
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is shen chaoyong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergstp.com>, registered with SHANGHAI YOVOLE NETWORKS INC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2013; the National Arbitration Forum received payment on September 23, 2013. The Complaint was received in both Chinese and English.
On September 23, 2013, SHANGHAI YOVOLE NETWORKS INC. confirmed by e-mail to the National Arbitration Forum that the <bloombergstp.com> domain name is registered with SHANGHAI YOVOLE NETWORKS INC. and that Respondent is the current registrant of the name. SHANGHAI YOVOLE NETWORKS INC. has verified that Respondent is bound by the SHANGHAI YOVOLE NETWORKS INC. 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 September 26, 2013, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 16, 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@bloombergstp.com. Also on September 26, 2013, the Chinese language 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 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bloombergstp.com> domain name, the domain name at issue, is confusingly similar to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
a. Complainant, Bloomberg Finance L.P., is a leading source of financial information and analysis and provides access to news, analytics, communications, liquidity, functionalities, and trading services.
b. Complainant and its wholly owned subsidiary, Bloomberg Finance One L.P., have collectively registered the BLOOMBERG mark in numerous industrial property offices around the world, including Chile’s National Institute of Industrial Property (“NIIP”) (e.g., Reg. No. 486,863 registered January 16, 2007) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744 registered July 15, 2003).
c. The <bloombergstp.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark because it incorporates the mark in its entirety and merely adds the indiscriminate string of letters “stp.”
d. Respondent is not commonly known as <bloombergstp.com>, because Respondent does not have Complainant’s permission to use the BLOOMBERG mark in a domain name, and the WHOIS information identifies the registrant of the <bloombergstp.com> domain name as “shen chaoyong.”
e. Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods and services or a legitimate noncommercial or fair use, because the disputed domain name does not resolve to an active website, and such an inactive holding of a domain name is not protected under the Policy.
f. Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) is further exemplified by the fact that Respondent offered to transfer the domain name to Complainant in exchange for payment.
g. Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i), because Respondent offered to transfer the domain name to Complainant in exchange for payment exceeding Respondent’s out-of-pocket expenses.
h. Because of the international popularity of the BLOOMBERG mark, the Panel infers that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the mark, which tends to show Respondent acted in bad faith under Policy ¶ 4(a)(iii).
i. Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii), because the <bloombergstp.com> domain name resolves to an inactive website.
j. Respondent registered the disputed domain name on April 27, 2013.
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 and its wholly owned subsidiary, Bloomberg Finance One L.P., have collectively registered the BLOOMBERG mark in numerous industrial property offices around the world, including Chile’s NIIP (e.g., Reg. No. 486,863 registered January 16, 2007) and the USPTO (e.g., Reg. No. 2,736,744 registered July 15, 2008). A complainant which has registered its mark with various national trademark authorities owns interests in the mark under Policy ¶ 4(a)(i). See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). It has also been held that a complainant need not register its mark in the respondent’s country of residence in order to sufficiently establish its rights in the mark under the Policy. 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 owns rights in the BLOOMBERG mark under Policy ¶ 4(a)(i), even though it does not appear to have registered that mark in Respondent’s country of residence.
The <bloombergstp.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark because it incorporates the mark in its entirety and merely adds the indiscriminate string of letters “stp.” The domain name adds the generic top-level domain (“gTLD”) “.com.” However, it has consistently been found that a domain name’s addition of a gTLD is irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, e.g., Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). In addition, a domain name which fully appropriates a complainant’s mark and merely adds a string of indiscriminate letters is confusingly similar to the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Here, the added letters “stp” are an indiscriminate string of letters that fail to distinguish the <bloombergstp.com> domain name from the BLOOMBERG mark. Accordingly, the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known as <bloombergstp.com>, because Respondent does not have Complainant’s permission to use the BLOOMBERG mark in a domain name, and the WHOIS information identifies the registrant of the <bloombergstp.com> domain name as “shen chaoyong.” A respondent is not commonly known by the disputed domain name where the complainant alleges that it had not authorized the respondent to appropriate the claimed mark and no evidence existed in the record, including the WHOIS information, that otherwise indicated that the respondent was commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). In the instant proceeding, the Panel finds that nothing in the record suggests that Respondent is commonly known by the name of <bloombergstp.com>, and thus holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the disputed domain name does not resolve to an active website, and such an inactive holding of a domain name is not protected under the Policy. A screenshot provided by Complainant shows that the <bloombergstp.com> domain name resolves to a website that states: “Bloomberg LP Network Error (dns_server_failure)” and “Your request could not be processed because an error occurred contacting the DNS server…” Id. Previous panels have held that a respondent’s inactive holding of a domain name tends to show that the respondent lacks rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Bloomberg L.P. v. SC Media Servs. & 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).”). Therefore, the Panel finds that Respondent’s inactive holding of the disputed domain name is not protected as 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).
Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) is further exemplified by the fact that Respondent offered to transfer the domain name to Complainant in exchange for payment. The Panel notes that Complainant has produced e-mail correspondence between Complainant and Respondent, showing that on April 30, 2013, Complainant asked Respondent to transfer the disputed domain name to Complainant, and on September 20, 2013, Respondent stated it would transfer the disputed domain name in exchange for Complainant’s payment of $1,000. The Panel notes that in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), a panel concluded that the respondent’s willingness to sell the disputed domain name to the complainant suggested that the respondent had no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). Similarly, this Panel finds that Respondent’s offer to transfer the domain name to Complainant for $1,000 is further evidence that Respondent lacks rights or legitimate interests in the <bloombergstp.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i), because, as noted above, Respondent offered to transfer the domain name to Complainant in exchange for payment exceeding Respondent’s out-of-pocket expenses. The Panel notes that in Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002), a previous panel found bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900, even though it would cost the complainant more to enforce its rights legally than to succumb to the respondent’s offer. In the instant proceedings, the Respondent’s offer to transfer the <bloombergstp.com> domain name in exchange for $1,000 is greater than the respondent’s offer of $900 in Prudential Ins., supra. By making this specific sales offer to Complainant, Respondent demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i). Pursuant to Prudential Ins., supra, the Panel finds bad faith under ¶ 4(b)(i) even though Complainant’s costs of enforcing its trademark rights are greater than Respondent’s offer $1,000.
Because of the international popularity of the BLOOMBERG mark, Respondent registered the disputed domain name with actual notice of Complainant’s rights in the mark, which tends to show Respondent acted in bad faith under Policy ¶ 4(a)(iii). Previous panels have inferred that a respondent had actual notice of the complainant’s rights in a mark indicating the respondent’s bad faith where the mark was widely famous or popular. See, e.g., Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity, and that this actual notice warranted a finding of respondent’s bad faith under Policy ¶ 4(a)(iii)). In the instant proceedings, Complainant’s BLOOMBERG mark is sufficiently famous, and the Panel finds that Respondent had actual knowledge of the mark at the time it registered the disputed domain name. Such an inference supports a finding that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii), because the <bloombergstp.com> domain name resolves to an inactive website. As discussed above, the Panel notes that a screenshot provided by Complainant shows that the <bloombergstp.com> domain name resolves to a website that states: “Bloomberg LP Network Error (dns_server_failure)” and “Your request could not be processed because an error occurred contacting the DNS server…”. It has previously been held that a respondent’s inactive holding of a disputed domain name indicates the respondent’s bad faith where there are no indications that the respondent could have registered and used the disputed domain name for any non-infringing purpose. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). In the instant proceedings, the Panel finds that Respondent has failed to make an active use of the disputed domain name. Accordingly, the Panel holds that Respondent’s non-use of the disputed domain name tends to show the Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergstp.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 23, 2013
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