Bloomberg L.P. v. Frank Meester et al.
Claim Number: FA1505001618800
Complainant: Bloomberg L.P. of New York, New York, United States of America.
Complainant Representative:
Respondent: Frank Meester of Sanur, International, ID.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: Uniregistry, Corp.
Registrars: 101domain, Inc.
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 Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: May 11, 2015
Commencement: May 12, 2015
Default Date: May 27, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant submits that its mark ‘BLOOMBERG’ is strong and has gained secondary meaning through the continuous use of the mark by the Complainant in the field of electronic trading, financial news and information business. The Complainant has provided documentation evidencing the trademark registration for the mark ‘BLOOMBERG’ in classes 9, 16, 35, 36, 38 and 41 by the United States Patents and Trademarks Office (USPTO). The same was registered on May 20, 2008.
The Complainant further submits that <BLOOMBERG.LINK> (hereinafter referred to as the impugned domain name) fully incorporates the Complainant’s mark and merely adds the extension ‘.LINK’. The Complainant alleges that the same is a blatant attempt to harvest the reputation and goodwill of the Complainant’s mark. In support of its contentions the Complainant has placed reliance on an NAF decision, Bloomberg L.P. v. Virtuality, NAF Decision 97095, wherein it was held that the mere addition of the generic word ‘now’ did not add any distinguishing features to the mark and did not prevent the mark from being recognized and associated with the Complainant.
Furthermore, the Complainant submits that the mark has neither been licensed to the Respondent nor is the Respondent permitted by the Complainant to use/apply the mark for any domain name. The Complainant further alleges that the Respondent is not commonly known by the impugned mark, as is evident from the WHOIS records. The Complainant further states that Respondent does not have any rights or legitimate interest in the impugned domain name as the same is not being used in connection with a bona fide offer of goods or services. The Complainant submits that the Respondent does not have any legitimate interest in or any valid basis to claim non-commercial use of the mark by the Respondent.
The Complainant finally submits that the Complainant has an established reputation in the financial and media sectors and attracts high consumer recognition and goodwill. The Complainant registered the domain name <BLOOMBERG.COM> in September 1993 and the same has been used continuously since by the Complainant. Placing reliance on the aforesaid contentions, the Complainant submits that it is not conceivable that the Respondent was unaware of the Complainant’s mark as the mark has achieved recognition.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires the Complainant to establish a prima facie case, proven by clear and convincing evidence, for each of the following three elements, in order to obtain an order that the domain name shall be suspended.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
- Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panelist below:
1. Identical or Confusingly Similar
The documents provided by the Complainant have established that the mark ‘BLOOMBERG’ is registered by the Complainant in classes 9, 16, 35, 36, 38 and 41 by the USPTO on May 20, 2008. It has further been established that the domain name <BLOOMBERG.LINK> was first registered by the Complainant in September 1993 and the same has been used continuously since. The Complainant has therefore established that the mark ‘BLOOMBERG’ registered by the Complainant is distinctive of its business. The mark ‘BLOOMBERG’ is a coined mark and the Complainant is entitled to the highest degree of protection. Apart from the above, the Complainant is well known and the Panelist agrees that the Complainant’s mark, through continuous use, has attained secondary meaning.
The Respondent has registered the disputed domain name <BLOOMBERG.LINK> thereby wholly incorporating the trademark ‘BLOOMBERG’ of the Complainant, which is found to sufficiently establish identity/confusing similarity. The Panelist finds that the extension ‘.LINK’ does not sufficiently distinguish the disputed domain name form the Complainant’s registered trademark. In fact, the registration of the domain name with a non-specific ‘.LINK’ adds to the confusion which in fact dilutes the brand of the Complainant. The Complainant asserts and the Panelist agrees, that the domain name <BLOOMBERG.LINK> is identical/confusingly similar to the Complainant’s mark ‘BLOOMBERG’.
2. No Rights or Legitimate Interests
The Complainant first registered the domain name ‘BLOOMBERG’ in September 1993 and the same has been continuously used by the Respondent ever since. Conversely, the Respondent, as per whois records, registered the domain name only on 21st November, 2014. Therefore, it is established without doubt that the Complainant has been using the mark for a sufficiently long period thereby establishing an association between the mark and the Complainant and creating recognition in favour of the Complainant.
There is no evidence that would indicate that the Respondent has any rights or legitimate interests in the mark ‘BLOOMBERG’. The Respondent is not commonly known by the disputed domain name and is not making legitimate non-commercial use or fair use of the disputed domain name.
As the Respondent has not filed a response, the Respondent is unable to prove its rights or legitimate interests in the trademark. The Complainant on the other hand has prima facie proved that the Respondent has no or legitimate interest in the domain name.
3. Domain is Registered and Used in Bad Faith
The Respondent registered the domain name <BLOOMBERG.LINK> in order to attract internet users for commercial gain by attempting to establish a connection/association with the Complainant. URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which are reproduced below:
“1.2.6.3 . . .
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s wed site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.”
The Complainant has to prove that the Respondent has registered and is using the disputed domain name in bad faith. It has already been established that the mark ‘BLOOMBERG’ is distinctive of the Complainant. It is further seen that the Respondent is not making use of the disputed domain name with bonafide offering of goods or services in any commerce. The Respondent is not making any legitimate non-commercial use or fair use of this domain name. The domain name of the Respondent is being used merely to point to advertising links to third-party websites. The Panelist observes that the Respondent is using the ‘BLOOMBERG’ mark merely to establish an association between the Complainant and the disputed domain name in order to generate traffic to its website.
Therefore, the Panelist finds that the disputed domain name has been registered and used in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
[<BLOOMBERG.LINK>]
Prathiba M. Singh, Examiner
Dated: May 27, 2015
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