Bloomberg Finance L.P. v. Alan LeStourgeon
Claim Number: FA1310001522354
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Alan LeStourgeon (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergfutures.net>, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013.
On October 7, 2013, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <bloombergfutures.net> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the names. 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 October 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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.net. Also on October 8, 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 November 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
The National Arbitration Forum was sent two emails from Respondent, which are identified in this proceeding as “Other Correspondence.” In these documents, Respondent consents to the transfer of the <bloombergfutures.net> domain name, stating in both e-mails that it would willingly give up the domain to be transferred to Complainant. However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12(b), the Panel will issue a decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
a) Complainant has been in business since at least 1981. Complainant has substantially advertised and promoted the BLOOMBERG mark. Complainant employs over 15,000 people in over 150 offices worldwide. Complainant’s mark is considered to be well-known.
b) Complainant contends it has rights in the BLOOMBERG mark, used in connection with financial data and news. Complainant owns registrations for the BLOOMBERG mark with the United States Patent and Trademark Office (“USPTO”) (See, e.g., Reg. No. 2,736,744 registered July 15, 2003).
c) Respondent’s <bloombergfutures.net> domain name is confusingly similar to Complainant’s BLOOMBERG mark. The disputed domain name fully incorporates Complainant’s mark while adding the term “futures.”
d) Respondent does not have rights or legitimate interests in the <bloombergfutures.net> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the BLOOMBERG mark in any way.
b. In section 5.a.4 of its Complaint, Complainant states that the <bloombergfutures.net> domain name resolves to a website that publishes finance-related news articles.
e) Respondent registered and is using the <bloombergfutures.net> domain name in bad faith.
a. The <bloombergfutures.net> domain name resolves to a website that publishes finance-related news articles.
b. Respondent had knowledge of Complainant’s BLOOMBERG mark prior to registering the <bloombergfutures.net> domain name because Complainant’s mark is well-known and Complainant’s own <bloomberg.com> domain name has been in use since 1993.
B. Respondent
Altogether the Forum received other correspondence from Respondent, the Forum did not receive a formal, timely response.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends it has rights in the BLOOMBERG mark, used in connection with financial data and news, and provides evidence of its registrations for the BLOOMBERG mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744 registered July 15, 2003). The Panel finds that Complainant has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through its proof of trademark registrations with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant next alleges that Respondent’s <bloombergfutures.net> domain name is confusingly similar to Complainant’s BLOOMBERG mark. Complainant notes that the disputed domain name fully incorporates Complainant’s mark while adding the term “futures.” The Panel notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.net.” The Panel finds that the addition of a generic or descriptive term does not sufficiently distinguish a disputed domain name from a trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <bloombergfutures.net> domain name is confusingly similar to Complainant’s BLOOMBERG mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent does not have rights or legitimate interests in the <bloombergfutures.net> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the BLOOMBERG mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Alan LeStourgeon.” Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the BLOOMBERG mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <bloombergfutures.net> domain name under Policy ¶ 4(c)(ii).
Complainant states that the <bloombergfutures.net> domain name resolves to a website that publishes finance-related news articles. Past panels have found that operating a competing business via a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds that Respondent’s use of the domain name to operate a financial news website amounts to a competing use, as Complainant’s business is related to the provision of financial data and news. Therefore, the Panel finds that Respondent’s use of the <bloombergfutures.net> domain name to operate a website that competes with Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <bloombergfutures.net> domain name in bad faith. Complainant states that the <bloombergfutures.net> domain name resolves to a website that publishes finance-related news articles. Past panels have found that operating a competing service via a confusingly similar domain name which attracts and misleads Internet users for a respondent’s own commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent registered and is using the <bloombergfutures.net> domain name in bad faith under Policy ¶ 4(a)(iv) because Respondent operates a competing service via a confusingly similar domain name that incorporates Complainant’s mark and attracts and misleads Internet users for Respondent’s own commercial gain.
Lastly, Complainant asserts that Respondent had knowledge of Complainant’s BLOOMBERG mark prior to registering the <bloombergfutures.net> domain name because Complainant’s mark is well-known and Complainant’s own <bloomberg.com> domain name has been in use since 1993. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark due to the magnitude of its fame, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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 has proven this element.
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.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 12, 2013
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