Bloomberg Finance L.P. v. Robert Drust
Claim Number: FA1609001694567
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Robert Drust (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergtrading.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2016; the Forum received payment on September 20, 2016.
On September 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloombergtrading.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 September 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@bloombergtrading.com. Also on September 26, 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.
A timely Response was received and determined to be complete on October 10, 2016.
On October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 as follows:
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.
Respondent’s <bloombergtrading.com> is confusingly similar to the BLOOMBERG mark because it incorporates the mark in its entirety while merely appending the descriptive term “trading,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the at-issue domain name. Respondent has not been commonly known by the 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.
B. Respondent
Respondent’s intended use of <bloombergtrading.com> is for discussing and teaching individuals the basics of gardening. Respondent was not afforded the opportunity to develop the website with a legitimate noncommercial or fair use before the registrar locked the domain name. Respondent registered <bloombergtrading.com> on September 13, 2016.
Complainant owns a USPTO trademark registration for its BLOOMBERG mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the BLOOMBERG mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the website addressed by the at-issue domain name to host click-through, competing advertisements through which Respondent presumably receives commercial profit.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s at-issue domain name contains Complainant’s entire BLOOMBERG trademark with generic term “trading” appended, followed by the top-level domain name “.com”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. In fact the use of the suggestive term in conjunction with Complainant’s mark adds to the confusion between the domain name and Complainant’s BLOOMBERG trademark. Therefore, the Panel finds that the <bloombergtrading.com> domain name is confusingly similar to Complainant’s BLOOMBERG trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also, Eastman Chem. Co. v. Patel, FA 524752 (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.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the <bloombergtrading.com> domain name lists “Robert Drust” as its registrant. There is no evidence before the Panel which suggests that Respondent is known by the at-issue domain and Respondent makes no claim that it is known by the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <bloombergtrading.com> domain name pursuant to Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Respondent uses the domain to host click-through, competing advertisements from which Respondent presumably receives commercial profit. The <bloombergtrading.com> referenced GoDaddy parked webpage contains hyperlinks that include: “Stock Collapse 2016,” “Personal Loans,” “Stock Market Day Trading,” and “Starting a Hedge Fund?”). Parked pages are not sufficient to establish rights or legitimate interests in an at-issue domain name. Therefore, using the confusingly similar <bloombergtrading.com> domain name in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See generally State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also, CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Further, although Respondent asserts that it intended to use the <bloombergtrading.com> domain name to support a flower business, the lack of any supporting documentation and the poor fit of the at-issue domain name to such a business in light of its overt reference to Complaint, makes such assertion less than credible on its face. Proof of Respondent’s intention to use its domain name in support of a bona fide business must be grounded in substantial competent evidence of Respondent’s preparation to use the domain name in the manner claimed, not merely bald, and in the instant case specious, assertions. See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002) (finding that, prior to having received notice of the dispute, the respondent had made demonstrable preparations to use the disputed domain name by submitted “substantial, overwhelming and undisputed evidence” of those preparations).
The at‑issue domain name was registered and is being used in bad faith. The exemplars of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which a panel may find bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). One objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). As discussed below non Policy ¶ 4(b) bad faith circumstances are present in the instant case from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Given Complainant’s 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. The combination of Complainant’s well known mark with the suggestive term “trading” in Respondent’s domain makes the Panel’s finding all the more compelling. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <bloombergtrading.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, Northwest Airlines, Inc. v. Mario Koch, FA 95688, (Forum Oct 27, 2000) ("The selection of a domain name which entirely incorporates the name of the world's fourth largest airline could not have been done in good faith").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergtrading.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 19, 2016
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