Bloomberg Finance L.P. v. George Barclay
Claim Number: FA1512001652555
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is George Barclay (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergview.co>, registered with 1&1 Internet AG.
The undersigned certifies that he 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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2015; the Forum received payment on December 15, 2015.
On December 18, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <bloombergview.co> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 December 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2016 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@bloombergview.co. Also on December 18, 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 January 27, 2016.
On February 1, 2016, Additional Submission was timely filed by Complainant.
On February 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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.
On February 9, 2016, Additional Submission was filed by Respondent and received by the Forum after the deadline for submissions had passed. Therefore, the Forum did not consider this submission to be in compliance with Supplemental Rule #7. However, the Panel took both Additional Submissions into consideration in deliberating its Decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant basically asserts that:
Complainant uses the BLOOMBERG mark in connection with its business in the electronic trading industry, financial news, and information businesses. Complainant has registered the BLOOMBERG mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003), establishing rights in the mark. Respondent’s <bloombergview.co> domain name is confusingly similar to the BLOOMBERG mark because it incorporates the mark in its entirety while merely appending the generic term “view” and the country-code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interests in respect of the <bloombergview.co> domain name. Respondent is not commonly known by the <bloombergview.co> domain name, nor has Complainant given Respondent permission to use the BLOOMBERG mark in connection with domain registrations. Further, Respondent has not utilized the disputed domain in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, Respondent has operated the <bloombergview.co> domain to display machine-general conversations, and has demanded $4,900 from Complainant for the transfer of the domain.
Respondent registered and used the <bloombergview.co> domain name in bad faith as it had actual and/or constructive knowledge of the BLOOMBERG mark and Complainant’s rights in the mark.
B. Respondent
Respondent basically alleges that:
Respondent’s <bloombergview.co> domain name is not confusingly similar as the “VIEW” addition to the BLOOMBERG mark sufficiently distinguishes the domain.
Respondent operates with a legitimate noncommercial or fair use. Respondent uses the disputed <bloombergview.co> domain to provide machine-generated conversations reflecting machine-intelligence technology to display models of natural language. Respondent’s use does not infringe Complainant’s business purposes.
Respondent has not registered and used the <bloombergview.co> domain name in bad faith. Respondent provides proof of out-of-pocket costs related to the disputed domain. Therefore, its offer for sale cannot be construed to have been in bad faith. Further, Respondent has no pattern of domain registrations, bad faith or otherwise. Last, Respondent has provided a disclaimer on its website, which reads, “This website is not associated with nor does it provide services from Bloomberg.”
C. Additional Submissions
In its additional submission, Complainant alleges that:
Respondent engaged in bad faith. The disputed domain name was originally registered on July 17, 2015 by Elaine Ou. Respondent does not mention his relationship with Ms. Ou, the previous holder of the disputed domain name.
Complainant and Respondent exchanged emails in which they pointed responses and monetary consideration as unsatisfactory.
Ms. Ou posted on her blog the exchange of emails and stated she would have transferred the disputed domain name for free if the words <please> and <thank you> had been used. She also posted she would start uploading something new to <bloombergview.co> every day. Neither Ms. Ou nor Respondent explained how Ms. Ou would control and upload content onto the disputed domain name while simultaneously selling the rights of the domain to the Respondent.
Complainant sent a cease and desist letter to the Respondent demanding the transfer of the domain after discovering the domain name had been transferred to the Respondent. Respondent answered demanding $4,900 for the disputed domain name, claiming it was his cost for acquiring it.
Respondent never mentioned he acquired the domain name from Ms. Ou. He did not reveal his close relationship with Ms. Ou nor the reason for the payment of a large sum for the disputed domain name. Furthermore, Respondent posted an article from <bloombergview.co> on Ms. Ou's website weeks before acquiring the domain.
D. Additional Submissions
In its additional submission, Respondent basically argues that:
Complainant's Additional Submission is wholly Insufficient to rehabilitate the Complaint.
Respondent has never been a colleague of the previous domain registrant nor a contributor to a blog belonging to the previous domain registrant.
Complainant’s attempts to falsely characterize Respondent’s relationship with the prior domain registrant are based on entirely on a website with little credibility.
Respondent never made any demand for payment in connection to the disputed domain name.
To file a complaint, as in the present case, when essential elements of the claim cannot be proved and where it must be known that they could not be proved and yet to allege bad faith against the Respondent is itself an act of bad faith and constitutes harassment of the Respondent amounting to Reverse Domain Name Hijacking.
In light of the foregoing, Complainant should not be granted any of the relief it seeks, and Respondent should be allowed to continue to use and control <bloombergview.co>.
Complainant owns registered marks for BLOOMBERG as part of an extensive U.S. and international family of marks containing the word BLOOMBERG. Complainant owns BLOOMBERG registrations in over one hundred countries. It is headquartered in New York City and employs over 15000 people in over 150 offices around the world.
Complainant owns <bloomberg.com> domain name since 1993 and owns more than one thousand domain names that incorporate the word “bloomberg.” Complainant also owns many defensive registrations of domain names incorporating misspellings of the word “bloomberg”.
Complainant has done business as Bloomberg L.P. since 1981 and has operated under the “Bloomberg” trade name in the United States and around the world since at least 1987. Since its inception, Complainant has become one of the largest providers of worldwide financial news and information and related goods and services. Complainant’s advertising and promotion of its services in association with the BLOOMBERG mark has created significant goodwill and consumer recognition.
The <bloombergview.co> domain name was registered on July 17, 2015 by the Respondent. The disputed domain name points to a website that displays machine general conversations.
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.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant needs only to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
In this case, there is no evidence that Respondent has registered any trademark that consists of, or contains, the BLOOMBERG trademark. Respondent's name does not bear any resemblance to the disputed domain name nor is there any basis to conclude that Respondent is commonly known by the BLOOMBERG trademark or the disputed domain name. Likewise, there is no evidence that Complainant has entered into any agreement, authorization or license with Respondent with respect to the use of the BLOOMBERG trademark or that the Respondent has ever been authorized by Complainant to use the BLOOMBERG trademark in any way.
Moreover, based on all evidence presented, the Panel finds that the Respondent’s use of the disputed domain name is likely to divert Internet users from Complainant’s website to Respondent’s website. In fact, internet users would not only be diverted, but also mistakenly believe that the website www.bloobergview.co is affiliated with Complainant, what could tarnish Complainant’s well-known trademark, which is also associated with information business.
Panel finds that is likely and so the use does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) (see Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)).
Moreover, the Panel notes that the Respondent includes a disclaimer on the resolving website which states that the website is not associated with nor does it provide services from Complainant. Nevertheless, the Panel finds that such placement of a disclaimer does not mitigate any confusion of internet users as to Complainant’s sponsorship of, or association with, the disputed domain name under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
Therefore, the Panel determines that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the trademark BLOOMBERG is widely known and had been in use for nearly three decades before Respondent's registration of the disputed domain name. In light of the fame and notoriety of Complainant's BLOOMBERG mark, it is inconceivable that Respondent could have registered the <bloombergview.co> domain name without actual and/or constructive knowledge of Complainant's rights in the mark.
Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's BLOOMBERG mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice 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).
Panel also finds that Respondent’s demand for excess money for this disputed domain name is evidence of bad faith.
Moreover, it is well established that the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors.
In this case, the Panel finds that the inclusion of a disclaimer by the Respondent does not negate a finding of bad faith use and registration under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Thus, having regard to the totality of the evidence, including the exchange of e-mails between the parties, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the well-known BLOOMBERG mark and in view of the conduct that Respondent has sought consideration in excess of its out-of-pocket costs from Complainant for the transfer of the disputed domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
In light of the particular circumstances of this case, the Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergview.co> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: February 12, 2016
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