Bloomberg Finance L.P. v. Mr Khan
Claim Number: FA1404001556064
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Mr Khan (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergestates.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2014; the National Arbitration Forum received payment on April 25, 2014.
On April 28, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bloombergestates.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@bloombergestates.com. Also on April 28, 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 May 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant is one of the largest providers of global financial news, data, and related goods and services. Complainant has been in business since 1981.
2. Complainant owns rights in the BLOOMBERG mark, used in connection with financial news, data, and related goods and services. Complainant owns 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).
3. Respondent’s <bloombergestates.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark. The disputed domain name includes Complainant’s mark in its entirety while adding the term “estates.”
4. Respondent does not have any rights or legitimate interests in the <bloombergestates.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BLOOMBERG mark in any way.
b. The <bloombergestates.com> domain name resolves to a blank, non-functioning website. See Complainant’s Exhibit H.
c. Complainant sent Respondent a cease and desist letter to which Respondent replied with a demand for payment of £2,500. See Complainant Exhibit G.
5. Respondent registered and is using the <bloombergestates.com> domain name in bad faith.
a. Respondent’s demand for payment of £2,500 in exchange for the transfer of the disputed domain name is evidence of Respondent’s bad faith. See Complainant’s Exhibit G.
b. Respondent had knowledge of Complainant’s BLOOMBERG mark prior to registering to the <bloombergestates.com> domain name because Complainant has operated its own website, <bloomberg.com>, since 1993, and Complainant’s mark has achieved a high level of recognition from financial and media sectors as well as consumers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bloomberg Finance L.P. which list its address as New York, NY, USA. Complainant is the owner of USA and foreign registrations for the BLOOMBERG mark. Complainant has continuously used its mark since at least 2003 in connection with its provision of goods and services in the financial information industry. Complainant also operates its business on the internet through several websites it owns including, but not limited to, <bloomberg.com>, <bloomberg.net> and <bloomberg.org>.
Respondent is listed as Mr. Khan of London, United Kingdom. Respondent’s registrar’s address is listed as Scottsdale, AZ. Respondent registered the <bloombergestates.com> domain name on or about December 11, 2013.
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 owns rights in the BLOOMBERG mark, used in connection with financial news, data, and related goods and services. Complainant states it owns registrations for the BLOOMBERG mark with the USPTO (e.g., Reg. No. 2,736,744 registered July 15, 2003). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). See also 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)). The Panel here finds that Complainant has rights in the BLOOMBERG mark within the meaning of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <bloombergestates.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark. Complainant asserts that the disputed domain name includes Complainant’s mark in its entirety while adding the term “estates.” The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding 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)). The Panel further finds that the addition of a gTLD to a trademark in a disputed domain name 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.”). The Panel here finds that Respondent’s <bloombergestates.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant contends Respondent does not have any rights or legitimate interests in the <bloombergestates.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 BLOOMBERG mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Mr Khan” as the domain name registrant. 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). Because Respondent was not authorized by Complainant to use the BLOOMBERG mark, and neither the WHOIS information nor the other evidence on record indicates the contrary, the Panel finds that Respondent is not commonly known by the <bloombergestates.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <bloombergestates.com> domain name resolves to a blank, non-functioning website. Past panels have found that a respondent who fails to make an active use of a disputed domain name is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel here finds that Respondent is not making a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent has failed to make an active use of the <bloombergestates.com> domain name.
Complainant states that it sent Respondent a cease and desist letter to which Respondent replied with a demand for payment of £2,500. Previous panels have held that such a demand of payment indicates that the respondent lacks rights or legitimate interests in the dispute domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel here finds that Respondent does not have any rights or legitimate interests in the <bloombergestates.com> domain name under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent registered and is using the <bloombergestates.com> domain name in bad faith. Complainant argues that Respondent’s demand for payment of £2,500 in exchange for the transfer of the disputed domain name is evidence of Respondent’s bad faith. Past panels have found that making a specific offer to sell a disputed domain name to a complainant demonstrates bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also 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). The Panel here finds that the Respondent registered and is using the <bloombergestates.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergestates.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 3, 2014
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