Bloomberg Finance L.P. v. Caglar ESEN
Claim Number: FA1510001644640
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Caglar ESEN (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberghd.com>, registered with GoDaddy.com, LLC.
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 Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2015; the Forum received payment on October 30, 2015.
On October 30, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloomberghd.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 November 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2015 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@bloomberghd.com. Also on November 2, 2015, 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.
A timely Response was received and determined to be complete on November 3, 2015.
On November 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Beatrice Onica Jarka as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
- Complainant has registered the BLOOMBERG trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003) and holds other 32 trademarks and services marks containing the BLOOMBERG word. The mark is used in connection with the provision of financial data, news, and analysis.
- The <bloomberghd.com> domain name is confusingly similar to the BLOOMBERG mark because the domain name contains the entire mark and makes only minor alterations such as adding the letters “hd” and the generic top-level domain (“gTLD”) “.com.”
- Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not actively using the domain name. See Compl., at Attached Ex. G.
- Respondent has engaged in bad faith registration and use because Respondent had actual knowledge of Complainant’s trademark rights at the time the disputed domain name was registered.
B. Respondent
Respondent claims that it has rights or legitimate interests because it is the original registrant of the disputed domain name. The Panel notes that the <bloomberghd.com> domain name was registered on October 22, 2015.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i) and with regards to Policy ¶ 4(a)(iii).
Complainant is Bloomberg L.P.,which has been in business since 1983. Complainant's substantial advertising and promotion of Complainant's mark, its BLOOMBERG Family of Marks, its Bloomberg trade name and its domain names have created significant goodwill and widespread consumer recognition. Since its inception in 1981, Complainant has become one of the largest providers of worldwide financial news and information and related goods and services. Complainant is recognized and trusted worldwide as a leading financial information and analysis source. Complainant has over 15000 employees. Complainant is headquartered in New York and serves clients in over 150 countries.
Respondent registered the disputed domain name on October 22, 2015, with evident knowledge of Complainant’s trademarks.
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.
1. Rights in BLOOMBERG trademark
Complainant purports it has registered the BLOOMBERG trademark with the USPTO (e.g., Reg. No. 2,736,744, registered July 15, 2003). The mark is used in connection with the provision of financial data, news, and analysis. The Panel finda, as past panels have held, that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
2. Confusing similarity of the disputed domain name to Complainant’s trademark
Complainant argues that the <bloomberghd.com> domain name is confusingly similar to the BLOOMBERG mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel notes that the domain name contains the entire mark and makes only minor alterations such as adding the letters “hd” and the gTLD “.com.”
As a general rule, the gTLD “.com” can never distinguish a domain name from the trademark at issue. In this sense, see Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Also, prior panels have established a confusing similarity where the domain name at issue contained the entire mark and merely added various letters. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).
Therefore, the Panel finds that the <bloomberghd.com> domain name is confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a)(i).
In UDRP practice, the 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.”).
Complainant asserts that Respondent is not commonly known as the <bloomberghd.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the BLOOMBERG mark in domain names. The Panel notes that “Caglar ESEN” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <bloomberghd.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant argues that Respondent is not actively using the domain name. The Panel notes
that Complainant has not provided evidence as to the webpage that resolves from the disputed domain name. But considering the response of Respondent, which does not rebut the assertions of Complainant in this sense, the Panel agrees that there is no indication of bona fide offering of goods under the disputed domain name by Complainant.
Respondent claims in its Response, that it has rights or legitimate interests in the disputed domain name because it was the first to register the disputed domain name. The Panel considers that being the first to register a domain name will not automatically grant a respondent rights under Policy ¶ 4(a)(ii), when the complainant holds a predated registered trademark. Therefore, the Panel shall disregard this argument made by Respondent.
As a conclusion, the Panel declines to award Respondent rights under Policy ¶¶ 4(c)(i) and (iii) and finds that Complainant has proven the second element under the Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. 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); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant also contends that in light of the fame and notoriety of its BLOOMBERG mark, it is inconceivable that Respondent could have registered the <bloomberghd.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel here may find that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). Nevertheless, the Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Therefore, the Panel finds that Complainant has proven the third element under the Policy ¶ 4(a)(iii);
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloomberghd.com> domain name be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka - Panelist
Dated: November 23, 2015
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