Bloomberg Finance L.P. v. Shelldurr International Inc. / SHELLDURR
Claim Number: FA1406001566809
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Shelldurr International Inc. / SHELLDURR (“Respondent”), represented by Matthew Abraham, Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloombergwest.info>, <bloombergwest.net>, and <bloombergwest.org>, registered with GoDaddy.com, LLC (R91-LROR).
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2014; the National Arbitration Forum received payment on June 26, 2014.
On June 26, 2014, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <bloombergwest.info>, <bloombergwest.net>, and <bloombergwest.org> domain names are registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the names. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@bloombergwest.info, postmaster@bloombergwest.net, postmaster@bloombergwest.org. Also on June 27, 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 July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
This Complaint is based upon the trademark and service mark BLOOMBERG. Chilean Regs. 785.615, 671.875 and 786.863; Czech Regs. 257639 and 216914; and South Korean Regs. 0113526,44948, 44947, 389613,43099, 389612, 49368,
and 54991 ("Complainant's Marks").
In addition, Bloomberg Finance One L.P., a wholly owned subsidiary of Complainant, has obtained registrations for at least thirty-two (32) additional trademarks and service marks containing the word BLOOMBERG in the United States including BLOOMBERG, U.S. Registrations 2736744, 3430969, and BLOOMBERG.COM, U.S. Registration 2769201. Moreover, Complainant and its affiliated companies (collectively, "Bloomberg") have obtained registrations for marks and continually used marks containing the word BLOOMBERG in over one hundred countries,
Complainant is the owner of the following domain names: <bloomberg.com>, registered September 29, 1993; <bloomberg.net>, registered March 8, 1997; and <bloomberg.org>, registered December 18, 1997. <Bloomberg.com> has been in continuous use by Complainant and its predecessor in interest since its registration in 1993. In addition, Bloomberg owns over 1,000 other domain names incorporating the word "bloomberg," including many defensive registrations of marks spelling "bloomberg" incorrectly.
Complainant is the owner and bona fide senior user of the "Bloomberg" trade name. Complainant's corporate parent, Bloomberg L.P., a Delaware limited partnership, has been in business continuously since 1981, and has operated under the "Bloomberg" name in the United States and around the world since at least as early as 1987. Bloomberg L.P. currently uses the "Bloomberg" trade name under license from Complainant.
Upon information and belief Respondent registered the domains <bloombergwest.info>, <bloombergwest.net> and <bloombergwest.org> on March 31, 2014.
Respondent's domain names are confusingly similar to Complainant's marks. Complainant's Marks are strong and have gained secondary meaning through their continued use in connection with Complainant's electronic trading financial news, and information businesses. Respondent is attempting improperly to capitalize on this recognition and goodwill.
On their face, the at-issue domain names are confusingly similar to the BLOOMBERG mark. Respondent's domain names fully incorporate the BLOOMBERG mark and add only the word "west" in a blatant attempt to garner the goodwill and recognition of the famous BLOOMBERG mark.
It is likely that an Internet user would mistakenly believe the websites accessible by the at-issue domain names. Currently the domain names redirect to the third-party website <huewire.com> which advertises itself as "Your #1 News Provider for People of Color."
Respondent has no right or legitimate interest in the domain names. Complainant has not licensed or otherwise permitted Respondent to use Complainant's Marks or any of Complainant's Family of Marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
Respondent replied to a demand letter from Complainant by demanding payment in exchange for the transfer of the domains.
There is no evidence to suggest that the Respondent currently listed on the WHO IS record is commonly known by the Bloomberg name. As a result, Respondent lacks a basis to rebut Complainant's Policy '][4(a)(ii) claim.
Respondent registered and used the at-issue domain names in order to trade off of Complainant's global reputation. As a result, Respondent cannot claim a right or legitimate interest in the domain names based on the notion it has used such domain names or a corresponding names in connection with a bona fide offer of goods or services.
Additionally, Respondent has no legitimate interest and no basis to claim non-commercial fair use of Complainant's BLOOMBERG mark. Complainant concludes from the above circumstances that Respondent never intended to provide a legitimate, non-commercial fair use of the disputed domain name.
Respondent registered and used the at-issue domain names in bad faith. Complainant 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. The <bloomberg.com> domain name was registered by Bloomberg on September 29, 1993 and has been in continuous use since 1993. Such facts and Respondent's use of the BLOOMBERG mark lead inescapably to the conclusion that Respondent was aware of Complainant's Marks before registering the Domain Name.
Moreover, Respondent's demand for payment in exchange for the transfer of the domain is further evidence of bad faith.
B. Respondent
Respondent
failed to submit a formal Response in this proceeding. However, did send an
email to the dispute resolution provider with regard to the instant dispute
stating: I've
offered you guys a deal before I have to hire additional consults and so this
complaint, the choice is yours?
Complainant owns a USPTO registered trademark for BLOOMBERG.
Respondent is not affiliated with Complainant and had not been authorized to use the BLOOMBERG mark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired trademark rights in BLOOMBERG.
The at-issue domain names address a website unconnected with Complainant."
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the BLOOMBERG mark through its USPTO trademark registration, as well as other registrations of such mark worldwide. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s at-issue domain names are constructed by adding the generic/descriptive term “west” to Complainant’s entire mark and then appending a generic top-level domain, either “.info, ” “.net” or “.org,” to the resulting string. These changes to Complainant’s mark are insufficient to materially distinguish any of the domain names from the mark. Therefore, the Panel finds that Respondent’s <bloombergwest.info>, <bloombergwest.net> and <bloombergwest.org> domain names are each confusingly similar to Complainant’s BLOOMBERG trademark under Policy ¶4(a)(i). See Bloomberg L.P. v. Viruality a/k/a Now Corp. a/k/a rahndo, FA 0097095 (Nat. Arb. Forum May 31, 2001) (finding the domain name <bloombergnow.com> confusingly similar to complainant’s trademark BLOOMBERG, because the addition of the generic word “now” does not add any distinguishing features to the mark, and does not render the mark any less recognizable.); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Shelldurr International Inc./SHELLDURR” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any of the bloombergwest domain names. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to usTLD Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Additionally, Respondents use of the domain names to direct Internet users to a website wholly unrelated to Complainant is neither evidence of a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names.
As discussed below, circumstance are present which urge the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Without citing any legal basis for holding the confusingly similar at-issue domain names in its portfolio, in an email responding to Complainant’s request to transfer the domain name Respondent demanded Complainant pay Respondent an arbitrary amount in excess of Respondent’s demonstrable out-of-pocket domain name outlays before it would transfer the at-issue domain names to Complainant. Respondent’s demand suggests bad faith registration and use of the domain names pursuant to Policy ¶4(b)(ii). See Coca-Cola Company v. Omer Faruk Bozdogan, WIPO Decision D-2012-1501. ("Respondent is in bad faith since it requested a compensation regarding the transfer of the disputed domain names which exceeded the Respondent's out-of-pocket expenses").
Moreover, Respondent had knowledge of Complainant’s BLOOMBERG mark prior to registering the bloombergwest trio of domain names. Each at-issue domain name contains Complainant’s well-known trademark in its entirety only adding the descriptor “west” and a necessary top-level domain name thereto. Further, Respondent uses the domain names to redirect Internet users to a website wholly unrelated to the domain names. In light of these circumstances the Panel concludes that Respondent’s reason for registering the confusingly similar domain names was to inappropriately exploit Complainant’s famous trademark. It is thus inconceivable that Respondent was unaware of Complainant’s BLOOMBERG trademark when it registered the three at-issue domain names. Respondent’s prior knowledge of Complainant’s trademark demonstrates Respondent’s bad faith registration and use of the domain names under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject 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 <bloombergwest.info>, <bloombergwest.net>, and <bloombergwest.org> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 28, 2014
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