Bloomberg Finance L.P. v. Mark Sugarman
Claim Number: FA1410001582859
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Mark Sugarman (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergstockfutures.com>, registered with TUCOWS, INC..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 2, 2014; the National Arbitration Forum received payment on October 2, 2014.
On October 2, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbi-tration Forum that the <bloombergstockfutures.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 October 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bloombergstockfutures.com. Also on October 2, 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 29, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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 Not-ices, 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 holds trademark registrations for the BLOOMBERG mark, which are on file with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 2,736,744, registered July 15, 2003).
Complainant uses the BLOOMBERG mark in connection with the operation and marketing of its business in electronic trading, and the distribution of financial news and information.
Complainant operates online through different forms of the <bloomberg.com> domain name, which has been in use since 1993.
Respondent registered the domain name <bloombergstockfutures.com> on December 22, 2013.
The domain name is confusingly similar to Complainant’s BLOOMBERG mark.
Respondent has not been commonly known by the domain name.
Respondent is neither licensed nor otherwise authorized by Complainant to use the BLOOMBERG mark.
Respondent does not employ the domain name to provide any bona fide offering of goods or services or to make a legitimate noncommercial or fair use of it.
Respondent does not make any active use of the domain name.
Respondent lacks rights to or legitimate interests in the disputed domain name.
Respondent knew of Complainant and its rights in the BLOOMBERG mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the BLOOMBERG trademark for purposes of Policy ¶ 4(a)(i) by reason of registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <bloombergstockfutures.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark. The domain name contains the entire mark, with only the addition of the generic terms “stock” and futures,” which both singly and together describe Complainant’s business, plus the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the domain names <theotheraol.com> and <theotheraol.net> were confusingly similar to the AOL mark, because the addition of such common terms to a mark does not distinguish the resulting domain names from the mark).
See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (finding that attaching a gTLD to the mark of another in creating a domain name is “unable to create a distinction capable of overcoming a finding of con-fusing similarity”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the contested domain name, and that Respondent is neither licensed nor otherwise authorized to use the BLOOMBERG mark. Moreover, the pertinent WHOIS information identifies the registrant of the <bloombergstockfutures.com> domain name only as “Mark Sugarman,” which does not resemble the domain name. On this record, we con-clude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the mean-ing of Policy Policy ¶ 4(c)(ii). See, for example, Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a UDRP respondent was not com-monly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a complainant asserted that it did not license or otherwise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not employ the <bloombergstockfutures.com> domain name to provide any bona fide offering of goods or services or any legitimate noncommercial or fair use, in that Respondent has not made any active use of it from the time of its registration. In the circumstances here presented, we con-clude that Respondent has failed to employ the domain name to make either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(i). 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 therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
It is customary in cases of this kind to resort to the provisions of Policy ¶ 4(b) in resolving the question whether a respondent has registered and is using a dis-puted domain name in bad faith under ¶ 4(a)(iii). However, the list of pertinent behaviors contained in Policy ¶ 4(b) is not exhaustive of those facts and circum-stances that may be taken into account in reaching a proper conclusion on the point of bad faith. See Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000):
[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.
Accordingly, we may examine the entirety of the surrounding circumstances in addressing this question.
Of particular importance in this connection is the fact that it is evident that Re-spondent knew of Complainant and its rights in the BLOOMBERG trademark when it registered the <bloombergstockfutures.com> domain name. This is plain both from Respondent’s appropriation of the entire mark and from its inclusion in the domain name of two generic terms which, both singly and together, describe Complainant’s business. The domain name itself is thus proof of Respondent’s bad faith in its registration and use, “use” being here understood as long-term inactive holding of the domain name in circumstances in which it is scarcely possible to imagine a legitimate use to which it might be put in the absence of Complainant’s consent. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of its registration of a contested domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bloombergstockfutures.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 3, 2014
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