Bloomberg Finance L.P. v. Nathan Chapman / None / Website
Claim Number: FA1610001697377
Complainant is Bloomberg Finance L.P. (Complainant), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Nathan Chapman / None / Website (Respondent), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloombergcf.com> and <bloombergcrowdfunding.com>, registered with Launchpad.com Inc.
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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2016; the Forum received payment on October 10, 2016.
On October 10, 2016, Launchpad.com Inc. confirmed by e-mail to the Forum that the <bloombergcf.com> and <bloombergcrowdfunding.com> domain names are registered with Launchpad.com Inc. and that Respondent is the current registrant of the names. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNs Uniform Domain Name Dispute Resolution Policy (the Policy).
On October 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2016 by which Respondent could file a Response to the Complaint via e-mail to all entities and persons listed on Respondents registration as technical, administrative and billing contacts, and to both postmaster@bloombergcf.com and postmaster@bloombergcrowdfunding.com. Also on October 11, 2016, the Written Notice of the Complaint was transmitted to Respondent via post and fax and to all entities and persons listed on Respondents registration, as technical, administrative and billing contacts, notifying Respondent of the e-mail addresses served and the deadline for a Response.
A timely Response was received and set to be complete by the 31st of October 2016.
On November 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus as Panelist.
Having reviewed the communication 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the disputed domain names are confusingly similar to Complainant's well-known BLOOMBERG trademark as they fully incorporate the said trademark together with the letters cf or the word crowdfunding, which do not render the said trademark any less recognizable.
Complainant further claims that Respondent has no right or legitimate interest in the disputed domain names as Complainant has not licensed or otherwise permitted Respondent to use Complainant's trademark nor to register any domain names incorporating Complainant's trademark. Complainant puts forth that to the best of its knowledge, there is no evidence to suggest that Respondent is commonly known by the disputed domain names. Moreover, the Complainant argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services nor making a noncommercial fair use of the disputed domain names as Respondent is using the disputed domain names to trade on the fame of Complainant's trademark.
Complainant contends that Respondent registered and is using the disputed domain names in bad faith and was aware of Complainant's trademark at the time of registration of the disputed domain names. Furthermore, Complainant deems that Respondent's demand for payment in exchange for the transfer of the disputed domain names is further evidence of bad faith.
B. Respondent
Respondent argues in favor of a legitimate interest in the disputed domain names due to its involvement in a crowdfunding platform located at www.wefunder.com and given that Respondent uses many other domain names related to the crowdfunding business. Respondent further alleges that he intends to make a noncommercial fair use of the disputed domain names as crowdfunding is not part of Complainant's field of activity and had ample time to register the disputed domain names had they been of interest to Complainant.
Respondent also alleges that the disputed domain names are not used in bad faith as they are not being used at all and that Complainant has not submitted evidence that the disputed domain names are being used in bad faith.
Complainant, who has been in business since 1983, holds many trade and service marks identical to or incorporating the term BLOOMBERG around the world. In addition, Complainant registered several versions of its BLOOMBERG trademarks as domain names. The said registrations expressed a purpose of providing services, notably providing financial information and related services, under the said trademark.
Respondent, a private individual, registered the domain names, bloombergcf.com and bloombergcrowdfunding.com on September 30th, 2016.
Respondent is involved in crowdfunding.
Complainant sent a cease and desist letter on October 5th, 2016, and received a settlement offer from Respondent of which the price was not disclosed.
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 disputed domain names <bloombergcf.com> and <bloombergcrowdfunding.com> wholly incorporate Complainants BLOOMBERG trademark with, respectively, the mere addition of the letters "cf" (which stands for crowdfunding) and the actual word crowdfunding. The said added letters and word are generic and display an obvious link to the finance industry, which makes up a large part of Complainant's reporting activity, consequently enhancing the likelihood of confusion (See e.g. Bloomberg L.P. v. Baltic Consultants Ltd, FA 95834, Nat. Arb. Forum, November 20, 2000).
For the purposes of the present comparison, the Panel agrees with the common view under the UDRP that generic Top-Level Domain (gTLD) extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (see, e.g., Boehringer Ingelheim International GMBH v. Ralf Zinc, WIPO Case No. D2016-1236) and considers the gTLD extensions .com of the disputed domain names irrelevant.
The Panel therefore finds that the disputed domain names are confusingly similar to Complainant's BLOOMBERG trademark in accordance with Paragraph 4(a)(i) of the Policy.
Complainant has not licensed or otherwise permitted Respondent to use Complainant's BLOOMBERG trademark, nor has Complainant licensed or otherwise permitted Respondent to apply for registration or use any domain name incorporating this trademark: an allegation which Respondent has not denied. Furthermore, Respondent expressly recognized never having been commonly known by the name BLOOMBERG.
In addition, based on the fact that the disputed domain names incorporate Complainant's trademark in its entirety, the Panel can not infer any fair use of the said domain names based on the sole fact that Complainant's activity is not, unlike that of Respondent, directly related to crowdfunding. It is also impossible for the Panel to make a finding of noncommercial use of the disputed domain names as the letters cf and the word crowdfunding immediately suggest that the disputed domain names aim or will aim at raising money. Finally, the Panel is of the view that Respondent's failure to develop corresponding websites shows a lack of a bona fide offering of goods or services (See e.g. State Fair of Texas v. State Fair Guides, FA 95066, Nat. Arb. Forum, July 25, 2000 ; MW AG v. Loophole, WIPO case No. D2000-1156, October 26, 2000).
Therefore, the Panel determines that Respondent has no rights or legitimate interests in the domain name in accordance with Paragraph 4(a)(ii) of the Policy.
As Complainants BLOOMBERG trademark is well-known and largely used worldwide, the Panel finds it very unlikely that Respondent was unaware of Complainants trademark at the time of registration of the disputed domain names. As a result, the Panel finds that Respondent could not have unintentionally incorporated Complainants trademark in the disputed domain names and therefore, has registered the disputed domain names in bad faith in order to capitalize on the reputation of Complainants trademark (See e.g., Siemens AG v. Client, WIPO Case No. D2015-2035, December 18, 2015 ; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, May 8, 2009).
Even though Respondent argues that he has not had time to use the disputed domain names as they were only registered ten (10) days before the filing of the Complaint, the Panel finds that it makes no sense to wait until Respondent actually uses the disputed domain name when such use will inevitably create confusion in light of Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's future websites (See e.g.Phat Fashions v. Kruger, FA 96193, Nat. Arb. Forum, December 29, 2000).
Furthermore, given the reputation of Complainant's trademark and the lack of evidence regarding any actual or contemplated bona fide use of the disputed domain names by Respondent, the Panel finds that such passive holding, even only ten (10) days after registration of the disputed domain names, under the abovementioned circumstances, constitutes use in bad faith (See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000).
Finally, the Panel finds that an offer to sell domain names for valuable consideration in excess of the documented out-of-pocket costs directly related to these domain names is not only evidence of, but conclusively establishes that the domain names have been registered and are being used in bad faith (See e.g. Upwork Inc v. WHOISGUARD, INC., WHOISGUARD PROTECTED a/k/a SHARK FREELANCE LLC, ANTHONY KIMANI, AF 101252, Nat. Arb. Forum, November 9, 2016). The Panel therefore finds that the settlement offer made by Respondent to Complainant is additional evidence of registration and use in bad faith of the disputed domain names (See e.g. Am. Anti Vivisection Soc'y v. Infa dot Net Web Serv., FA 95685, Nat. Arb. Forum, November 6, 2000).
Therefore, the Panel finds that the requirements under Paragraph 4(a)(iii) of the Policy are met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <bloombergcf.com> and <bloombergcrowdfunding.com> domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: November 16, 2016
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