Bloomberg L.P. v. Andrei Karpov
Claim Number: FA1409001580628
Complainant is Bloomberg L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Andrei Karpov (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <japanbusinessweek.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 22, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <japanbusinessweek.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 September 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@japanbusinessweek.com. Also on September 23, 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 October 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant uses BUSINESS WEEK to promote its predominately online publication of news media. The mark has been registered with the United States Patent and Trademark Office ("USPTO") and is protected as such. See, e.g., Reg. No. 549,742, registered Oct. 23, 1951. The <japanbusinessweek.com> domain name merely adds the geographic term “japan” and the generic top-level domain (“gTLD”) “.com” to the mark and thus the domain name is confusingly similar to the mark.
Respondent has no rights and legitimate interests in this <japanbusinessweek.com> domain name as there is no bona fide commercial offering or legitimate noncommercial use, and no evidence suggests that Respondent “Andrei Karpov” has been commonly known by the domain name.
Respondent’s actions illustrate bad faith registration and use of the <japanbusinessweek.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a prominent United States company engaged predominately in online publication of news media.
2. The BUSINESS WEEK mark has been registered by Bloomberg Finance L.P., a wholly-owned subsidiary of Complainant with the United States Patent and Trademark Office ("USPTO") and is protected as such. The registration gives Complainant trademark rights in the BUSINESS WEEK mark; See, e.g., Reg. No. 549,742, registered Oct. 23, 1951.
3.The <japanbusinessweek.com> domain name was registered on December 11, 2013.
4. The domain name has been used to promote hyperlinks to third-party websites.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant uses BUSINESS WEEK to promote its predominately online publication of news media. Complainant notes that the mark has been registered by Bloomberg Finance L.P. , a wholly-owned subsidiary of Complainant with the USPTO and is protected as such. See, e.g., Reg. No. 549,742, registered Oct. 23, 1951. The Panel finds that this registration evidences Complainant’s right to proceed under the Policy. See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (“The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”)
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BUSINESS WEEK trademark. Complainant argues that the <japanbusinessweek.com> domain name merely adds the geographic term “japan” and the generic top-level domain (“gTLD”) “.com” to the mark and thus the domain name is confusingly similar to the mark. The Panel agrees that the mere addition of a geographic term and gTLD to the BUSINESS WEEK mark produces a Policy ¶ 4(a)(i) confusingly similar Internet domain name. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s BUSINESS WEEK trademark and used it in its domain name, adding the word “ Japan” before the trademark, implying that the domain name is an official domain name of Complainant dealing with its business activities in Japan and leading to an official website of Complainant dealing with the same subject;
(b) Respondent has used the domain name to promote links to third-party websites;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant claims that Respondent is not commonly known as the disputed domain name because Complainant does not endorse or authorize Respondent’s use and Respondent’s identifying information in the WHOIS record suggests it is only known as “Andrei Karpov.” The Panel finds that the evidence is lacking to suggest Respondent was commonly known by the domain name under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”);
(e) Complainant further claims the domain name has been used to promote hyperlinks to third-party websites, with little other utility. The Panel notes that this domain name does promote random hyperlink ads that send Internet users to various websites. See Compl., at Attached Ex. G. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)), the panel found that use of domain names for generic hyperlink promotions was neither a bona fide offering nor legitimate noncommercial or fair use. The Pane similarly concludes that the protections of Policy ¶¶ 4(c)(i) or (iii) are of no avail to Respondent here.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel finds that despite making no allegations pertaining to Policy ¶ 4(b), Complainant may prevail if it can show bad faith registration and use in some manner. 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).
Here Complainant premises its claim of bad faith use and registration upon Respondent’s registration of the <japanbusinessweek.com> domain name with actual knowledge of Complainant’s rights. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant and its mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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”).
The Panel also finds that Respondent has used the domain name in bad faith. Respondent has registered the domain name where, because of its fame and that of Complainant and its eponymous founder, it must have known it was acting illegally; there can therefore be no legitimate explanation for having registered the domain name and retained it.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <japanbusinessweek.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 17, 2014
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