Bloomberg L.P. v. Nathan Joseph / Mainstream Advertising
Claim Number: FA1402001545592
Complainant is Bloomberg L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Nathan Joseph / Mainstream Advertising (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businesweek.com>, registered with Moniker Online Services LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2014; the National Arbitration Forum received payment on February 26, 2014.
On February 27, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <businesweek.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 March 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@businesweek.com. Also on March 3, 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 March 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Complainant, Bloomberg L.P., agreed to buy Businessweek magazine from The McGraw-Hill Companies, Inc. on October 13, 2009. Businessweek is one of the leading sources of worldwide business and financial news and information.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BUSINESSWEEK mark (e.g., Reg. No. 549,742, registered October 23, 1951).
iii. The domain name is confusingly similar to Complainant’s BUSINESSWEEK mark.
iv. Respondent has no right or legitimate interest in the domain name.
v. There is no evidence to suggest that Respondent is commonly known by the BUSINESSWEEK name.
vi. Respondent’s current and only use of the infringing domain name is to provide advertising links to third-party websites.
vii. Respondent registered and used the domain name in bad faith.
viii. Respondent was aware of the BUSINESSWEEK mark before registering the infringing domain name.
ix. Respondent registered the <businesweek.com> domain name on January 27, 1995.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BUSINESSWEEK mark. Respondent’s domain name is confusingly similar to Complainant’s BUSINESSWEEK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <businesweek.com> domain name, and that Respondent registered and uses the 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 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 has owned the Businessweek publication since 2009. When it purchased Businessweek, Complainant acquired trademark registrations with the USPTO for the BUSINESSWEEK mark (e.g., Reg. No. 549,742, registered October 23, 1951). Complainant’s registration of the BUSINESSWEEK mark with the USPTO sufficiently shows that Complainant has rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant asserts that Respondent’s <businesweek.com> domain name is confusingly similar to Complainant’s BUSINESSWEEK mark. The disputed domain name fully incorporates Complainant’s BUSINESSWEEK mark and removes the letter “s.” Respondent’s omission of one letter from Complainant’s mark does not differentiate the disputed domain name from the mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s BUSINESSWEEK mark in its disputed domain name. Respondent’s inclusion of a gTLD to Complainant’s mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the gTLD “.com” does not distinguish the disputed domain name from the mark). Thus, the Panel finds that Respondent’s <businesweek.com> domain name is confusingly similar to Complainant’s BUSINESSWEEK mark according to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that there is no evidence to suggest that Respondent is commonly known by the BUSINESSWEEK name. Complainant asserts that it has not licensed or otherwise permitted Respondent to use the BUSINESSWEEK mark, nor has Complainant licensed or authorized Respondent to apply for or use any domain name incorporating the mark. The registrant of the disputed domain name is listed as “Nathan Joseph / Mainstream Advertising” in the WHOIS record. Accordingly, the Panel determines, based on the evidence in the record, that Respondent is not commonly known by the <businesweek.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding 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).
Complainant argues that Respondent’s current and only use of the <businesweek.com> domain name is to provide advertising links to third-party websites. Respondent’s domain name leads to a page providing links that may compete with Complainant’s business, such as “Refinance your mortgage today!,” “Refinance Your Mortgage Today With A Top…,” and “Discount Shopping.”In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel stated, “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).” Because the Panel finds that Respondent is using the <businesweek.com> domain name to offer competing links on its website, the Panel holds that Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(i) legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent was aware of Complainant’s mark before registering the <businesweek.com> domain name. Complainant contends that its magazine has a strong reputation and a high-profile presence in the financial and media sectors, and is subject of substantial consumer recognition and goodwill. Complainant claims that the <businessweek.com> domain name was registered on January 27, 1995, and has been in continuous use since that time. The Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights when Respondent registered its domain name. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
The Panel finds Complainant has satisfied 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 <businesweek.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 7, 2014
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