Bloomberg L.P. v. J C
Claim Number: FA1403001549948
Complainant is Bloomberg L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is J C (“Respondent”), represented by Chris M. Wisdom, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businessweekmagazine.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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2014; the National Arbitration Forum received payment on March 21, 2014.
On March 24, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <businessweekmagazine.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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@businessweekmagazine.com. Also on March 25, 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.
A timely Response was received and determined to be complete on April 14, 2014.
Complainant filed an Additional Submission which was received and determined to be compliant on April 17, 2014.
On April 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado 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
a) Complainant’s wholly owned subsidiary Bloomberg Finance, L.P. purchased BusinessWeek magazine from The McGraw-Hill Companies, Inc. in 2009. As a result, Bloomberg Finance, L.P. became the successor in interest to the BUSINESSWEEK AND BUSINESS WEEK trademarks, including six United States trademark registrations. See Complainant’s Exhibit C.
b) Complainant, as a licensee of Bloomberg Finance, L.P. has rights in the BUSINESSWEEK mark, used in connection with financial news and information. Complainant owns registrations for the BUSINESSWEEK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,746,837 registered Jan. 19, 1993).
Respondent’s <businessweekmagazine.com> domain name is confusingly similar to Complainant’s BUSINESSWEEK mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the term “magazine.”
c) Respondent does not have any rights or legitimate interests in the <businessweekmagazine.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BUSINESSWEEK mark in any way.
b. The <businessweekmagazine.com> domain name resolves to a website featuring links to third-party websites. See Complainant’s Exhibit G.
c. Complainant sent a demand letter to Respondent, and Respondent replied by demanding “a few thousand dollar[s]” in exchange for transfer of the domain name. See Complainant’s Exhibit I.
d) Respondent registered and is using the <businessweekmagazine.com> domain name in bad faith.
a. Respondent’s bad faith is evidenced by its attempt to sell the disputed domain name to Complainant for a “few thousand dollar[s].” See Complainant’s Exhibit I.
b. Respondent had knowledge of Complainant’s BUSINESSWEEK mark because Complainant’s mark has a strong reputation and a high-profile presence in the financial and media sectors.
B. Respondent
a) Respondent registered the domain name on April 23, 2013.
b) Complainant is no longer using the BUSINESSWEEK mark because it rebranded itself as Bloomberg Businessweek in 2010. Complainant is currently using the BLOOMBERG BUSINESSWEEK mark. See Respondent’s Exhibit C. Therefore, Respondent’s domain name is not confusingly similar to the trademark currently in use by Complainant.
c) The content located on the resolving website was placed there by the registrar, and Respondent has not received any monetary compensation or benefit from the content.
d) Respondent has rights and legitimate interests in <businessweekmagazine.com> domain name because Respondent acquired the domain name as part of its ordinary course of business as an investor in new businesses, including internet-based businesses. See Respondent’s Exhibit A. Respondent purchased the domain name to start a publication business. Id.
e) Respondent never attempted to sell the <businessweekmagazine.com> domain name to Complainant. Rather, Respondent’s offer was in regards to settlement negotiations between itself and Complainant based on several phone conversations between the parties. See Respondent’s Exhibit A.
f) Respondent did not register the <businessweekmagazine.com> domain name in bad faith.
a. Respondent did not attempt to sell the <businessweekmagazine.com> domain name to Complainant. Rather, Respondent made an offer in an attempt to seek a resolution to the dispute. See Respondent’s Exhibit A.
b. Respondent was unaware of Complainant’s BUSINESSWEEK mark at the time of registering the disputed domain name. See Respondent’s Exhibit A.
C. Additional Submissions
Complainant’s Additional Submission
a) Complainant has not abandoned its BUSINESSWEEK mark by rebranding its magazine as Bloomberg Businessweek. Complainant only needs to show that it has rights in the BUSINESSWEEK mark, not that it is actually using the trademark. Regardless, Complainant continues to use the BUSINESSWEEK mark as part of its worldwide financial news service, which is evidenced by Complainant’s use of its <businessweek.com> domain name to direct Internet users to the digital version of its Bloomberg Business week magazine. See Complainant’s Exhibit I.
b) Respondent admits that it purchased the <businessweekmagazine.com> domain name to “start another business involving a publication.” Such use would constitute the promotion of competing goods and services, which is not a bona fide offering of goods or services.
c) Respondent’s claims that it invests in or creates new businesses, that one of its investments includes an unnamed publication with a circulation of thirteen million, and that Respondent has invested in roughly three thousand domain names. These facts all point to inference that Respondent did in fact have knowledge of Complainant’s BUSINESSWEEK mark prior to registering the <businessweekmagazine.com> domain name.
d) Complainant disputes Respondent’s contention that it did not make an offer to sell the <businessweekmagazine.com> domain name in any manner other than as an attempt to come to a resolution on Complainant’s claims. Respondent sought thousands of dollars in exchange for transfer of the disputed domain name to account for Respondent’s time and effort; however, Respondent has conceded that it never used the disputed domain name. See Complainant’s Exhibit I.
The Complaint is based upon the trademarks and service marks
BUSINESS WEEK U.S. Reg. Nos. 0549742 and 1938462 and BUSINESSWEEK
U.S. Reg. Nos. 1746837 and 3467035, which are owned by Complainant’s wholly owned subsidiary, Bloomberg Finance, L.P., a successor in interest of The McGraw-Hill Companies, Inc.
A confirmatory assignment of six United States trademarks was recorded at the United States Patent and Trademark Office showing Bloomberg, L.P. as assignee.
Respondent registered the domain “businessweekmagazine.com” on July 11, 2004.
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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant explains that it purchased BusinessWeek magazine from The McGraw-Hill Companies, Inc. in 2009. As a result, Complainant states that it became the successor in interest to the BUSINESSWEEK AND BUSINESS WEEK trademarks, including six United States trademark registrations. See Complainant’s Exhibit C. Respondent counters that Complainant is no longer using the BUSINESSWEEK mark because it rebranded itself as Bloomberg Businessweek in 2010. Respondent submits that Complainant is currently using the BLOOMBERG BUSINESSWEEK mark. See Respondent’s Exhibit C. Therefore, Respondent believes the <businessweekmagazine.com> domain name is not confusingly similar to the trademark currently in use by Complainant. However, in its additional submission, Complainant counters Respondents claims by stating that Complainant has not abandoned its BUSINESSWEEK mark by rebranding its magazine as Bloomberg Businessweek. Complainant believes it only needs to show that it has rights in the BUSINESSWEEK mark, not that it is actually using the trademark. Regardless, Complainant explains that it continues to use the BUSINESSWEEK mark as part of its worldwide financial news service, which is evidenced by Complainant’s use of its <businessweek.com> domain name to direct Internet users to the digital version of its Bloomberg Business week magazine. See Complainant’s Exhibit I. The Panel finds that an assignment contract was properly executed and recorded, and consequently, Complainant has rights in the BUSINESSWEEK mark pursuant to Policy ¶ 4(a)(i) and Complainant’s valid trademark registrations as analyzed below. See Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).
Complainant contends it has rights in the BUSINESSWEEK mark, used in connection with financial news and information. Complainant owns registrations for the BUSINESSWEEK mark with the USPTO (e.g., Reg. No. 1,746,837 registered Jan. 19, 1993). Therefore, the Panel finds that Complainant has rights in the BUSINESSWEEK mark under Policy ¶ 4(a)(i) because Complainant owns valid registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <businessweekmagazine.com> domain name is confusingly similar to Complainant’s BUSINESSWEEK mark. Complainant states that the disputed domain name incorporates Complainant’s mark in its entirety while adding the term “magazine.” The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a generic or descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the 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)). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. 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 <businessweekmagazine.com> domain name is confusingly similar to Complainant’s BUSINESSWEEK mark pursuant to Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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 Respondent does not have any rights or legitimate interests in the <businessweekmagazine.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BUSINESSWEEK mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “J C” as the domain name registrant and “Mach 10 Ventures, LLC” as the registrant organization. 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 BUSINESSWEEK 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 <businessweekmagazine.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the <businessweekmagazine.com> domain name resolves to a website featuring links to third-party websites. See Complainant’s Exhibit G. The Panel notes that these links include “Magazine Online,” “Business Online,” and “Search Engine Marketing.” The provision of such competing or unrelated links has generally not been found to constitute a bona fide offering of goods and services or a legitimate non-commercial or fair use. See Skyhawks Techns. LLC v Tidewinds Group, Inc. FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent is not making 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) because the <businessweekmagazine.com> domain name resolves to a website featuring links to third-party websites.
In its additional submission, Complainant observes that Respondent admits that it purchased the <businessweekmagazine.com> domain name to “start another business involving a publication.” Complainant submits that such use would constitute the promotion of competing goods and services, which is not a bona fide offering of goods or services. Past panels have found that using a confusingly similar domain name to operate a business that competes with a complainant does not demonstrate a bona fide offering of goods and services. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Therefore, because Respondent is attempting to operate a business that would compete with Complainant, the Panel finds that such a business would not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(iii).
Respondent explains that the content located on the resolving website was placed there by the registrar, and Respondent has not received any monetary compensation or benefit from the content. Past panels have held that a respondent is responsible for the content that appears via the disputed domain name, even if that domain name is parked. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Therefore, the Panel finds that the fact that the registrar placed content on the website connected to the <businessweekmagazine.com> domain name does not release Respondent from liability for the content displaying therein.
Complainant claims it sent a demand letter to Respondent, and Respondent replied by demanding “a few thousand dollar[s]” in exchange for transfer of the domain name. See Complainant’s Exhibit I. In its additional submission, Complainant disputes Respondent’s contention that it did not make an offer to sell the <businessweekmagazine.com> domain name in any manner other than as an attempt to come to a resolution on Complainant’s claims. Complainant observes that Respondent sought thousands of dollars in exchange for transfer of the disputed domain name to account for Respondent’s time and effort; however, Respondent has conceded that it never used the disputed domain name. See Complainant’s Exhibit I. The Panel notes that in its correspondence with Complainant Respondent admitted that the costs of acquiring and keeping the disputed domain name have been $83.23. Id. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <businessweekmagazine.com> domain name under Policy ¶ 4(a)(ii) because Respondent has made an offer to sell to Complainant for more that Respondent’s out-of-pocket expenses related to the disputed domain name.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant contends that Respondent registered and is using the <businessweekmagazine.com> domain name in bad faith. Complainant asserts that Respondent’s bad faith is evidenced by its attempt to sell the disputed domain name to Complainant for a “few thousand dollar[s].” See Complainant’s Exhibit I. The Panel notes that in its correspondent with Complainant Respondent admitted that the costs of acquiring and keeping the disputed domain name have been $83.23. In its additional submission, Complainant disputes Respondent’s contention that it did not make an offer to sell the <businessweekmagazine.com> domain name in any manner other than as an attempt to come to a resolution on Complainant’s claims. Respondent sought thousands of dollars in exchange for transfer of the disputed domain name to account for Respondent’s time and effort; however, Respondent has conceded that it never used the disputed domain name. See Complainant’s Exhibit I. Id. Past panels have found that an attempt to sell a disputed domain name to a complainant for more than out-of-pocket costs demonstrates bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent registered and is using the <businessweekmagazine.com> domain name in bad faith under Policy ¶ 4(b)(i) because Respondent made an offer to sell the disputed domain name to Complainant for more than out-of-pocket expenses.
Complainant asserts that Respondent had knowledge of Complainant’s BUSINESSWEEK mark because Complainant’s mark has a strong reputation and a high-profile presence in the financial and media sectors. In it additional submission, Complainant added that Respondent’s claims that (1) it invests in or creates new businesses, (2) one of its investments includes an unnamed publication with a circulation of thirteen million, and (3) that Respondent has invested in roughly three thousand domain names, all point to inference that Respondent did in fact have knowledge of Complainant’s BUSINESSWEEK mark prior to registering the <businessweekmagazine.com> domain name. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. 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). Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name. Therefore, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] respondent knew of, and targeted, [the] complainant’s trade mark.”); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <businessweekmagazine.com> domain name be TRANSFERRED to Complainant.
Jaime Delgado, Panelist
Dated: May 1, 2014
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