Bloomberg Finance L.P. v. Whois Protected / VCN - Whois Protection Service Panama
Claim Number: FA1405001560980
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Whois Protected / VCN - Whois Protection Service Panama (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg-money.com>, registered with Key-Systems GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2014; the National Arbitration Forum received payment on May 23, 2014. The Complaint was submitted in both German and English.
On May 23, 2014, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <bloomberg-money.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems 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 June 2, 2014, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of June 23, 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-money.com. Also on June 2, 2014, the German language 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 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
PRELIMINARY MATTER: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in German, thereby making the language of the proceedings in German.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, Bloomberg Finance L.P., is 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.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BLOOMBERG mark (e.g., Reg. No. 2,736,744, registered July 15, 2003).
iii. Respondent’s domain name is confusingly similar to Complainant’s mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the <bloomberg-money.com> domain name.
iii. The domain name does not point to any functioning website.
i. Respondent registered and used the domain name in bad faith.
ii. The domain name does not point to any functioning website.
iii. Respondent was aware of Complainant’s mark before registering the disputed domain name.
1. Respondent’s <bloomberg-money.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or legitimate interests in the <bloomberg-money.com> domain name.
3. Respondent registered or used the <bloomberg-money.com> 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 contends that it is 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 owns 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 resides and operates out of Panama. However, the Panel determines that it is not relevant under Policy ¶ 4(a)(i) whether Complainant holds a trademark registration in the country of Respondent’s residence, so long as it can establish rights in the mark in another 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). Accordingly, the Panel finds that Complainant’s USPTO registration of the BLOOMBERG mark sufficiently shows that it has rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <bloomberg-money.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark. Complainant claims that Respondent fully incorporates the BLOOMBERG mark and merely adds the word “money.” The Panel finds that Respondent’s addition of a descriptive term does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel also notes that Respondent adds a hyphen and the generic top-level domain (“gTLD”) “.com” to the BLOOMBERG mark in the disputed domain name. The Panel holds that Respondent’s inclusion of punctuation or a gTLD does not differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel concludes that Respondent’s <bloomberg-money.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark according to 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 urges that Respondent is not commonly known by the <bloomberg-money.com> domain name. Complainant contends that it has not licensed or otherwise permitted Respondent to use Complainant’s mark, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating its mark. Complainant further argues that there is no evidence suggesting that the registrant listed on the WHOIS record is commonly known under the disputed domain name. The Panel notes that the registrant is identified as “Whois Protected / VCN - Whois Protection Service Panama” in the WHOIS record. 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. Therefore, the Panel determines that Respondent is not commonly known by the <bloomberg-money.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s <bloomberg-money.com> domain name does not point to any functioning website. The Panel notes that Respondent’s disputed domain name resolves to a virtually blank page. See Complainant’s Exhibit G. If the Panel finds that Respondent has failed to make an active use of the disputed domain name, the Panel holds that Respondent is not using the <bloomberg-money.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. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel notes that Complainant fails to allege any of the traditional Policy ¶ 4(b) factors when discussing Respondent’s bad faith use and registration of the <bloomberg-money.com> domain name. In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that “[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” Accordingly, the Panel holds that it can consider other bad faith factors, such as failure to make an active use or actual knowledge of Complainant’s rights in a mark, in determining whether Respondent operated in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s <bloomberg-money.com> domain name does not point to any functioning website. The Panel observes that Respondent’s disputed domain name leads to a virtually blank webpage. See Complainant’s Exhibit G. In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that respondent’s failure to make active use of its domain name indicated that respondent registered the disputed domain name in bad faith. Thus, the Panel holds that Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Complainant alleges that Respondent was aware of Complainant’s mark before registering the <bloomberg-money.com> domain name. Complainant states 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 also asserts that the <bloomberg.com> domain name was registered by Complainant in 1993 and has been continuously used since 1993. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's BLOOMBERG mark and rights and therefore determine that Respondent registered the <bloomberg-money.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed 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-money.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 10, 2014
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