Bloomberg Finance L.P. v. henrylau / jiatong
Claim Number: FA1601001657447
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is henrylau / jiatong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <bloombergvr.com> and <vrbloomberg.com>, registered with eName Technology Co., Ltd.
The undersigned certifies she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 21, 2016; the Forum received payment January 21, 2016. The Complaint was received in both Chinese and English.
On January 21, 2016, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <bloombergvr.com> and <vrbloomberg.com> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. verified that Respondent is bound by the eName Technology Co., Ltd. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 27, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 16, 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@bloombergvr.com, postmaster@vrbloomberg.com. Also on January 27, 2016, the Chinese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 issues its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
Complainant’s Allegations in this Proceeding:
Complainant has rights in the BLOOMBERG mark through registration of multiple derivations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., including Reg. No. 2,736,744, registered July 15, 2003). Respondent’s disputed domains <bloombergvr.com> and <vrbloomberg.com> are confusingly similar to the BLOOMBERG mark as the domains incorporate the entire mark and merely differ through the addition of the generic top-level domain (“gTLD”) “.com,” and the letters “VR.”
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized Respondent through any license or other permission to use the BLOOMBERG marks, nor has Respondent been commonly known by the disputed domain name. Additionally, Respondent’s inactive use of the domain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is passively holding the disputed domains in bad faith. Complainant’s BLOOMBERG mark has a strong reputation and significant consumer recognition to the point where it is inconceivable that Respondent registered the domains without knowledge of Complainant’s marks.
Respondent’s Allegations in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent created the disputed domains on January 4, 2016.
Language of the Proceedings
The Panel notes the Registration Agreement is written in Chinese; thereby making the language of the proceedings Chinese. After review of the applicable rules on language of the proceedings under the UDRP, the Panel determines that:
Pursuant to Rule 11(a), the Panel finds that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant established rights and legitimate interests in the disputed domain names.
Respondent has no such rights or interests.
Respondent registered two disputed domains that are confusingly similar to Complainant’s protected mark.
Respondent registered and passively held these disputed domains 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 Complainant to 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.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant contends that it has rights in the BLOOMBERG mark through registration of the mark with the USPTO and various other trademark agencies throughout the world (e.g., Reg. No. 2,736,744, registered July 15, 2003). See Compl., at Attached Ex. A & B. Prior panels have routinely concluded that registration of a mark with the USPTO is sufficient to demonstrate a registrant’s rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). This Panel finds that Complainant has rights in the BLOOMBERG mark.
Complainant next contends that Respondent’s disputed domains <bloombergvr.com> and <vrbloomberg.com> are confusingly similar to the BLOOMBERG mark. The domains appear to differ from the mark through the addition of the gTLD “.com,” and the letters “VR.” Panels routinely find that the gTLD “.com” does not distinguish a domain from a mark to which the gTLD is attached. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Similarly, addition of letters to a mark does not change the confusing similarity of the domain. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). The Panel thus finds that the disputed domains are confusingly similar to the BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 contends that Respondent is not legitimately associated with Complainant and Respondent is not commonly known by the disputed domain names. No information in the record indicates any legitimate association between Complainant and Respondent. Further, Respondent’s WHOIS information lists the registrant of the domains as “henrylau” of the organization “jiatong.” These names do not appear to resemble the disputed domains. A Respondent is not commonly known by a disputed domain where WHOIS information does not resemble the domain and where no evidence in the record indicates an association between respondent and complainant. 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). This Panel finds that Respondent is not commonly known by the disputed domains under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent’s inactive use of the domains does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domains resolve to websites displaying the message: “The show page is not found, please submit your domain name and waiting for validation!” See Compl., at Attached Ex. G. Panels consistently find that inactive use of a domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“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).”). This Panel finds that Respondent’s inactive use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or Legitimate Interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant also contends that in light of the fame and notoriety of Complainant's BLOOMBERG mark, it is inconceivable that Respondent could have registered the <bloombergvr.com> and <vrbloomberg.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds 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."). The Panel agrees, however, with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names 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). The Panel further finds that passive holding of disputed domain names also supports findings that the domain names were registered and held passively in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <bloombergvr.com> and <vrbloomberg.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 3, 2016.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page