Bloomberg Finance L.P. v. Hildegard Gruener
Claim Number: FA1401001538345
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Hildegard Gruener (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombrerg.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 January 9, 2014; the National Arbitration Forum received payment January 9, 2014.
On January 9, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <bloombrerg.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 January 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@bloombrerg.com. Also on January 10, 2014, 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 February 3, 2014, 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. Respondent is not commonly known by the disputed domain name.
ii. Respondent’s only use of the domain name is to provide advertising links to third-party websites.
i. Respondent’s only use of the domain name is to provide advertising links to third-party websites.
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 in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests.
The disputed domain name is confusingly similar to Complainant’s protect 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 asserts 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 Complainant’s Exhibit B. The Panel notes that Respondent appears to reside in Austria. However, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent operates, so long as Complainant can establish 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 finds that Complainant’s registration of the BLOOMBERG mark with the USPTO proves its rights in the mark according to 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).
Complainant states that Respondent’s <bloombrerg.com> domain name fully incorporates the BLOOMBERG mark and adds only the letter “r.” The Panel finds that Respondent’s inclusion of an additional letter does not differentiate the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s BLOOMBERG mark in its disputed domain name. In Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002), the panel held that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity.” The Panel finds that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s <bloombrerg.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark according 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 Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights 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 such 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 alleges that Respondent is not commonly known by the <bloombrerg.com> domain name. Complainant argues that it has not licensed or otherwise permitted Respondent to use its 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. The Panel observes that the WHOIS information identifies “Hildegard Gruener” as the registrant of the disputed domain name. See Complainant’s Exhibit E. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Consequently, the Panel finds that Respondent is not commonly known by the <bloombrerg.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s only use of the <bloombrerg.com> domain name is to provide advertising links to third-party websites. The Panel notes that Respondent’s disputed domain name leads to a competing hyperlink directory, featuring links titled “Money Market Account,” “Stock Prices,” “Mutual Funds,” and more. See Complainant’s Exhibit G. Previous panels found that a respondent’s use of a disputed domain name to provide competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, this Panel finds that Respondent is not using the <bloombrerg.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 contends that Respondent’s only use of the <bloombrerg.com> domain name is to provide advertising links to third-party websites. The Panel observes that Respondent’s disputed domain name leads to a hyperlink directory, which contains competing links titled “Payday Cash Loan,” “Mortgages,” “Student Loans,” and others. See Complainant’s Exhibit G. The Panel notes that Respondent presumably gains from click-through fees from its use of the disputed domain name. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel held that “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” Therefore, the Panel finds that Respondent registered and is using the <bloombrerg.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent was aware of Complainant’s marks before registering the <bloombrerg.com> domain name. Complainant argues that it 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. Complainant claims that it registered <bloomberg.com> September 29, 1993, and that it has made continuous use of the domain since 1993. Consequently, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name in bad faith under 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 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 <bloombrerg.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 17, 2014.
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