Bloomberg Finance L.P. v. Bloomberg Investments
Claim Number: FA1603001665140
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Bloomberg Investments (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg-investments.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that 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 March 11, 2016; the Forum received payment March 11, 2016.
On March 11, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloomberg-investments.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC 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 March 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@bloomberg-investments.com. Also on March 14, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 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 name be transferred from Respondent to Complainant.
Complainant’s Allegations in this Proceeding:
Complainant uses the BLOOMBERG mark in connection with its operations in the electronic trading industry, financial news, and information businesses. Complainant registered the BLOOMBERG mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003), establishing rights in the mark. See Compl., at Attached Ex. B. Respondent’s <bloomberg-investments.com> domain name is confusingly similar to the BLOOMBERG mark because it incorporates the mark in its entirety while merely appending the descriptive term “investments,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information and a lack of any evidence to the contrary. Further, Respondent’s use of the domain is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain to host click-through, competing advertisements through which Respondent presumably receives commercial profit.
Respondent registered and is using the disputed domain name in bad faith. Due to the fame and notoriety of Complainant’s mark, Respondent registered the domain name with actual knowledge of Complainant’s rights in the mark.
Respondent’s Allegations in this Proceeding:
Respondent did not submit a response for the Panel’s consideration. The Panel notes that Respondent registered the <bloomberg-investments.com> domain name February 16, 2016.
Complainant has long-standing and well-known rights to and legitimate interests in its protected mark.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in Complainant’s protected mark.
Respondent registered and uses the disputed domain name 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 uses the BLOOMBERG mark in connection with its operations in the electronic trading industry, financial news, and information businesses. Complainant asserts it registered the BLOOMBERG mark with the USPTO (e.g., Reg. No. 2,736,744, registered July 15, 2003), and argues that this registration establishes Policy ¶ 4(a)(i) rights in the mark. See Compl., at Attached Ex. B. Previous Panels have found this argument persuasive. See, e.g., BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Nat. Arb. Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Therefore, this Panel agrees that Complainant sufficiently demonstrated its rights in the BLOOMBERG mark under Policy ¶ 4(a)(i).
Next, Complainant asserts that Respondent’s <bloomberg-investments.com> domain name is confusingly similar to the BLOOMBERG mark because it incorporates the mark in its entirety while merely appending the descriptive term “investments,” a hyphen, and the gTLD “.com.” Addition of a descriptive term, a hyphen, or the gTLD “.com” do not adequately distinguish a respondent’s disputed domain from a complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Accordingly, this Panel agrees that the <bloomberg-investments.com> domain name is confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is 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 argues that Respondent has no rights or legitimate interests in the <bloomberg-investments.com> domain name. Complainant begins by asserting Respondent is not commonly known by the <bloomberg-investments.com> domain name and that Complainant has not given Respondent license to use the BLOOMBERG mark in connection with domain registrations. The available WHOIS information indicates “Bloomberg Investments” as the registrant of the disputed domain. Respondent did not submit any evidence to rebut Complainant’s contention that Respondent is not commonly known by the disputed domain name. Thus the Panel finds that Respondent is not commonly known as the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant contends further that Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provides evidence that Respondent is using the disputed domain to host a generic landing page containing links with titles such as, “DOW to Drop 80% in 2016,” “6 Stocks to Hold Forever,” and “MFS Investment Management.” See Compl., at Attached Ex. G. Using a confusingly similar domain to display competing commercial links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). This Panel finds that Respondent lacks rights and legitimate interests in the disputed domain.
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 name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant’s Policy ¶ 4(a)(iii) arguments fall primarily outside of the borders of Policy 4(b). The Panel notes, however, 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).
Complainant asserts that, due to its strong reputation and high-profile presence in the financial and media sectors, Respondent must have had actual knowledge of Complainant's rights in the BLOOMBERG mark before registering the disputed domain name. Complainant further argues that it is unlikely that Respondent would have registered the domain name without being aware of Complainant’s mark and rights in its mark. Given the notoriety of Complainant’s mark and the use given the disputed domain name by Respondent, the Panel agrees with Complainant relative to Respondent's actual knowledge, and finds that Respondent registered the <bloomberg-investments.com> domain name in bad faith according to Policy ¶ 4(a)(iii). The Panel finds similarly that Respondent’s opportunistic use of Complainant’s protected mark to provide services in the same commercial area for which Complainant is known to provide commercial services supports findings of bad faith use of the disputed domain name. See 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name 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 <bloomberg-investments.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 19, 2016
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