Bloomberg Finance L.P. v Domain Manager
Claim Number: FA1410001585082
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Domain Manager (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombrgweekly.info>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
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 October 16, 2014; the National Arbitration Forum received payment on October 16, 2014.
On October 17, 2014, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the National Arbitration Forum that the <bloombrgweekly.info> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.com 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 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@bloombrgweekly.info. Also on October 20, 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 November 14, 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 the BLOOMBERG mark to promote its financial news, information, and analysis services. The BLOOMBERG mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,736,744, registered July 15, 2003). The <bloombrgweekly.info> domain name removes a character from the BLOOMBERG mark, adds the term “weekly,” and the generic top-level domain (“gTLD”) “.info” and thus is confusingly similar to the mark.
Respondent has no rights or legitimate interests in the <bloombrgweekly.info>
domain name. First, Respondent is not commonly known by the <bloombrgweekly.info>
domain name. Respondent is not using the <bloombrgweekly.info>
domain name in connection with any active website.
Respondent has registered and is using the disputed domain name in bad faith because Respondent had to have knowledge of Complainant’s rights when registering the domain name.
B. Respondent
Respondent did not submit a formal Response in this proceeding. However, on October 24, 2014, Respondent sent an email to the National Arbitration Forum stating as follows:
“Dear Sirs, We received a complaint from Bloomberg regarding our domain bloombrgweekly.info. We have attempted to reply since first being notified by them but all emails kept bouncing back. This domain is not in use and they are free to have it. We just need to know where to transfer it to. Thanks.”
1. Complainant is a well known United States company engaged in the news and information media industry and a leader in the provision of financial news and data.
2. Complainant’s wholly owned subsidiary, Bloomberg Finance One L.P. is the registered owner of the BLOOMBERG mark which has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,736,744, registered July 15, 2003).
3. The <bloombrgweekly.info> domain name was registered on September 12, 2014.
4. Respondent has retained the disputed <bloombrgweekly.info> domain name in connection with an active website.
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.
As noted above, Respondent did not submit a formal response, but sent an email to the Forum stating in effect that it had no objection to the transfer of the domain name to Complainant. At the present, however, there has been no agreement between the parties that the transfer should take place and Respondent maintains that it has not been able to communicate with Complainant. In the circumstances, the Panel has taken the view that it should proceed with the traditional UDRP analysis of the dispute. Additionally, in view of the lack of a formal 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 the BLOOMBERG mark to promote its financial news, information, and analysis services. Complainant notes the BLOOMBERG mark has been registered by Bloomberg Finance One l.P., a wholly-owned subsidiary of Complainant, with the USPTO (e.g., Reg. No. 2,736,744, registered July 15, 2003). Complainant has also submitted evidence that the Panel accepts to the effect that Complainant and other associated companies in the Bloomberg Group are the registered owners of numerous international registrations for BLOOMBERG. The Panel agrees that as both parties are residents of the United States, the USPTO registration is steadfast evidence of Policy ¶ 4(a)(i) rights for Complainant. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLOOMBERG trademark. Complainant claims that the <bloombrgweekly.info> domain name removes a character from the BLOOMBERG mark, adds the term “weekly,” and the gTLD “.info” and thus is confusingly similar to the mark. The Panel agrees that adding the gTLD to the mark is irrelevant. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel also agrees that merely adding a generic term such as “weekly” and removing the letter “e” does not sufficiently distinguish the domain name from the trademark. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)”). Thus, the Panel finds Policy ¶ 4(a)(i) confusing similarity is present in the <bloombrgweekly.info> domain name.
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 BLOOMBERG trademark and used it in its domain name, adding the word “weekly” to the trademark and omitting the letter “e” from the trademark, implying that the domain name is an official domain name of Complainant leading to an official website of Complainant;
(b) Respondent has retained the domain name, but not used it in connection with an active website;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the <bloombrgweekly.info> domain name. The Panel notes how “Domain Manager” is identified as the registrant of record in the WHOIS information. This Panel concludes there is no evidence to justify finding Respondent is “commonly known as” the disputed <bloombrgweekly.info> domain name. 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);
(e) Complainant argues that Respondent is not using the
<bloombrgweekly.info> domain name in connection with any
active website. The Panel notes that, when entering the disputed domain name,
the internet user does not reach anything other than an error page. See
Compl., at Attached Ex. G. In Bloomberg
L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the panel found that failing to make an active
use of a domain name was not a Policy ¶ 4(c)(i) bona fide offering, or
Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The “Error” website to
which this domain name resolves is not a use protected under Policy ¶¶ 4(c)(i)
or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a formal 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 agrees that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration 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).
Secondly, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith because Respondent had to have knowledge of Complainant’s rights when registering the domain name. 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's 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) as the fame of the BLOOMBERG mark is such that the only inference that can be drawn is that Respondent has actual notice of the mark and the extensive operations of Complainant and its associated companies when it registered and whilst it has retained the disputed domain name. 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”).
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 <bloombrgweekly.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 15, 2014
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