Bloomberg Finance L.P. v. Thomas Borsutzky / AMAN Media GmbH
Claim Number: FA1405001558916
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Thomas Borsutzky / AMAN Media GmbH (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg-consulting-group.com>, registered with 1API GmbH.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2014; the National Arbitration Forum received payment on May 12, 2014.
On May 13, 2014, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <bloomberg-consulting-group.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 May 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@bloomberg-consulting-group.com. Also on May 13, 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 June 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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 uses the BLOOMBERG mark in connection with a wide range of news services, financial planning services, and other analysis. Complainant has registered BLOOMBERG with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,736,744 registered July 15, 2003). The <bloomberg-consulting-group.com> domain name is confusingly similar to BLOOMBERG because the addition of “consulting-group” is a blatant attempt to ride off the mark.
2. Respondent is not known by the <bloomberg-consulting-group.com> domain name. Complainant has not otherwise licensed Respondent’s use of the domain name. Furthermore, Respondent has made no bona fide offering through this commercial website. The domain name is used to ride off Complainant’s reputation.
3. Respondent registered and used the domain name in bad faith. The fame of Complainant’s BLOOMBERG mark is as such that Respondent had actual knowledge when registering the domain name.
B. Respondent
1. Respondent did not submit a response by the due date. The Panel notes that On June 6, 2014, Respondent sent an e-mail correspondence to the National Arbitration Forum saying that they do not have access to the ADR forum and they do not speak English either. However, the Panel determines that such a correspondence does not constitute a proper Response.
2. The Panel notes the <bloomberg-consulting-group.com> domain name was registered on October 30, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 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 says it uses has rights in the BLOOMBERG mark, used in connection with a wide range of news services, financial planning services, and other analysis. A party has trademark rights when there is evidence that a national trademark agency has registered the trade name. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Here Complainant has registered BLOOMBERG with the USPTO (e.g., Reg. No. 2,736,744 registered July 15, 2003). Thus, the Panel concludes Respondent has adequately shown its rights under Policy ¶ 4(a)(i).
Complainant brings the issue that the <bloomberg-consulting-group.com> domain name is allegedly confusingly similar to BLOOMBERG because the addition of “consulting-group” is a blatant attempt to ride off the mark. Prior panels have agreed that adding descriptive terms to a mark, hyphenation, or a requisite top-level domain, do not ordinarily make a domain name distinctive. See, e.g., Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen). Here, the Panel agrees that the phrase “consulting-group” is descriptive of the financial or analytical consulting services offered by Complainant. Thus, the Panel finds Respondent’s <bloomberg-consulting-group.com> domain name to be confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a)(i).
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 first claims Respondent cannot have rights or legitimate interests in this domain name because Respondent is not known by the <bloomberg-consulting-group.com> domain name. The Panel agrees that whether a respondent is “commonly known” by a disputed domain name depends on the information available to the panel as to a given respondent’s identity. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). At present, Respondent has not responded to the allegations of the Complaint, and the only other evidence is the domain name’s WHOIS record listing “Thomas Borsutzky / AMAN Media GmbH” as the registrant of record. Furthermore, Complainant claims it has not otherwise licensed Respondent’s use of the domain name. Thus, the Panel agrees there is simply no basis for finding Respondent to be commonly known as the <bloomberg-consulting-group.com> domain name under Policy ¶ 4(c)(ii).
Complainant also disputes Respondent’s rights by claiming Respondent has made no bona fide offering through this commercial website. Respondent claims the domain name is used to ride off Complainant’s reputation. The Panel agrees there is normally no bona fide offering when a disputed domain name is used to promote a good or services that are similar to the good or service offered under the correlative trademark. See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here Respondent is using the domain name to promote what is allegedly a competing consulting group using the BLOOMBERG mark in its trade name. See Compl., at Attached Ex. G. Thus, the Panel agrees this competitive commercial use of a confusingly similar is not bona fide within the meaning of Policy ¶ 4(c)(i), nor is such a commercial use a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel notes there is no contention made under Policy ¶ 4(b). Prior panels have held that it is not necessary to show bad faith under one of the Policy ¶ 4(b) illustrations. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Therefore, the Panel considers Complainant’s arguments with respect to bad faith regardless of whether they conform to the examples in Policy ¶ 4(b).
The Panel notes that although not alleged by Complainant, the domain name is used to promote a business allegedly called the “Bloomberg Consulting Group.” The Panel determines that this evinces an attempt by Respondent to pass off as Complainant—evidence of Policy ¶ 4(a)(iii) bad faith. See, e.g., DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
With respect to bad faith, Complainant claims Respondent registered and used the domain name in bad faith because the fame of Complainant’s BLOOMBERG mark is as such that Respondent had actual knowledge when registering the domain name. Prior panels have found bad faith from actual, though not constructive, knowledge of a trademark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Thus, the Panel implies Policy ¶ 4(a)(iii) bad faith as it believes Respondent had actual notice of Complainant’s rights when registering the domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloomberg-consulting-group.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 12, 2014
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