Bloomberg L.P. v. Evgenij Kunshin
Claim Number: FA1312001533119
Complainant is Bloomberg L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Evgenij Kunshin (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businessweek.org>, registered with Regtime 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2013; the National Arbitration Forum received payment on December 5, 2013. The Complaint was submitted in both English and Russian.
On December 6, 2013, Regtime Ltd confirmed by e-mail to the National Arbitration Forum that the <businessweek.org> domain name is registered with Regtime Ltd and that Respondent is the current registrant of the name. Regtime Ltd has verified that Respondent is bound by the Regtime 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 December 13, 2013, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of January 2, 2014 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@businessweek.org. Also on December 13, 2013, the Russian 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 January 3, 2014, 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 contentions.
1. Complainant, Bloomberg L.P., announced on October 13, 2009 that it had agreed to buy BUSINESSWEEK magazine from “The McGraw-Hill Companies, Inc.” Complainant’s BUSINESS WEEK is one of the leading sources of worldwide business and financial news and information.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BUSINESS WEEK mark (e.g., Reg. No. 549,742, registered October 23, 1951).
3. Respondent’s domain name fully incorporates the BUSINESS WEEK mark in its disputed domain name.
4. Respondent has no rights or legitimate interests in the domain name.
i. There is no evidence to suggest that the Respondent currently listed on the WHOIS record is commonly known by the BUSINESS WEEK name.
ii. The infringing domain name does not point to any functioning website.
5. Respondent registered and used the domain name in bad faith.
i. The infringing domain name does not point to any functioning website.
ii. Respondent’s use of the BUSINESS WEEK mark demonstrates that Respondent presumably was aware of these marks before registering the infringing domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Bloomberg L.P., announced on October 13, 2009 that it had agreed to buy BUSINESSWEEK magazine from “The McGraw-Hill Companies, Inc.” Complainant’s BUSINESS WEEK is one of the leading sources of worldwide business and financial news and information.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BUSINESS WEEK mark (e.g., Reg. No. 549,742, registered October 23, 1951).
3. Respondent registered the <businessweek.org> domain name on March 1, 2010. The domain name does not lead to an active website and Respondent does not appear to have used it for a legitimate business or personal purpose.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts that it announced on October 13, 2009 that it had agreed to buy BUSINESSWEEK magazine from “The McGraw-Hill Companies, Inc.” Complainant alleges that BUSINESS WEEK is one of the leading sources of worldwide business and financial news and information. Complainant contends that it is the owner of trademark registrations with the USPTO for the BUSINESS WEEK mark (e.g., Reg. No. 549,742, registered October 23, 1951). See Complainant’s Exhibit A. The Panel finds that although Respondent appears to operate in Russia, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent operates, as long as it can demonstrate rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel concluds that Complainant’s registration of the BUSINESS WEEK mark with the USPTO sufficiently evidences its rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BUSINESS WEEK trademark. Complainant argues that Respondent’s <businessweek.org> domain name fully incorporates the BUSINESS WEEK mark in its disputed domain name. The Panel observes that Respondent omits the space and adds a generic top-level domain (“gTLD”) to Complainant’s mark in its disputed domain name. In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” Therefore, the Panel determines that Respondent’s <businessweek.org> domain name is identical to Complainant’s BUSINESS WEEK mark pursuant to 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 prominent BUSINESS WEEK trademark and to use it in its domain name without making any alterations other than removing the gap appearing between the two words of the trademark;
(b) The domain name does not lead to an active website and Respondent does not appear to have used the domain name for any legitimate business or personal purpose;
(b) Respondent has engaged in these activities without the consent or approval of Complainant;
(c) Complainant claims that there is no evidence to suggest that the Respondent currently listed on the WHOIS record is commonly known by the BUSINESS WEEK name. Complainant argues that it has not licensed or otherwise permitted Respondent to use the BUSINESS WEEK mark, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating this mark. The Panel observes that the registrant of the disputed domain name is listed as “Evgenij Kunshin” in the WHOIS information. See Complainant’s Exhibit D. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <businessweek.org> domain name under Policy ¶ 4(c)(ii);
(d) Complainant asserts that Respondent’s <businessweek.org> domain name does not point to any functioning website. The Panel observes that Respondent’s disputed domain name leads to an inactive website stating, “Network Error (dns_unresolved_hostname). Your requested host “www.businessweek.org” could not be resolved by DNS.” See Complainant’s Exhibit G. As the Panel finds that Respondent has failed to make an active use of the disputed domain name, the Panel finds that Respondent is not using the <businessweek.org> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”);
(e) Respondent has not availed himself of the opportunity he had to give particulars of any right or legitimate interest he may have in the disputed domain name.
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, although Complainant does not argue any of the traditional Policy 4(b) factors when alleging that Respondent has registered and is using the <businessweek.org> domain name in bad faith, the Panel finds that the examples of bad faith under Policy ¶ 4(b) are intended to be illustrative, rather than exclusive. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Accordingly, it is always open to a Panel to find, on adequate evidence, that other factors such as failure to make an active use of the domain name and actual notice of Complainant’s rights in the mark can constitute sufficient evidence of bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant asserts that Respondent’s <businessweek.org> domain name does not point to any functioning website. The Panel notes that Respondent’s domain name resolves to an inactive webpage that states, “Network Error (dns_unresolved_hostname). Your requested host “www.businessweek.org” could not be resolved by DNS.” See Complainant’s Exhibit G. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy. Therefore, the Panel determines that Respondent’s failure to make an active use of the <businessweek.org> domain name demonstrates bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent’s use of the BUSINESS WEEK mark demonstrates that Respondent presumably was aware of these marks before registering the <businessweek.org> domain name. Complainant alleges that its <businessweek.com> domain name was registered on January 27, 1995 and has been in continuous use since that time. Complainant also contends that its magazine has a strong reputation and a high-profile presence in the financial and media sectors, and is the subject of substantial consumer recognition and goodwill. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines 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 that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, 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 BUSINESS WEEK mark and in view of the conduct of the Respondent, Respondent registered and used it 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 <businessweek.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 4, 2014
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