Bloomberg Finance L.P. v. Michael Goldstein
Claim Number: FA1705001732181
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York, USA. Respondent is Michael Goldstein (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebloombergfirm.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 May 17, 2017; the Forum received payment May 17, 2017.
On May 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thebloombergfirm.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 May 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2017, 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@thebloombergfirm.com. Also on May 18, 2017, 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 June 12, 2017, 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 may issue 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.
A. Complainant
Complainant uses the various BLOOMBERG marks in connection with its global finance information business. Complainant registered the BLOOMBERG marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,786,725, registered Aug. 10, 1993), as well as in numerous other jurisdictions, which demonstrates its rights in the mark. See Compl., at Attached Exs. A, B. Respondent’s <thebloombergfirm.com> is confusingly similar to Complainant’s mark because it incorporates the BLOOMBERG mark in its entirety, adding only the generic terms “the” and “firm,” along with the generic top-level domain (“gTLD”) “.com,” none of which meaningfully distinguish the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <thebloombergfirm.com>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the BLOOMBERG marks for any purpose. Respondent also fails to use the domain name in connection with any bona fide offering of goods or services, because the domain name resolves to an inactive website. See Compl., at Attached Ex. G. Further, since Respondent is not using the domain name’s resolving site, it is apparently not being used at all, and it cannot be considered a legitimate noncommercial or fair use. See Compl., p. 6.
Respondent registered and continues to use <thebloombergfirm.com> in bad faith, although it does so with full actual knowledge of Complainant’s rights. Since Complainant’s BLOOMBERG marks are so widely known, Respondent must have had actual knowledge of Complainant’s rights therein. This highly probable level of awareness is clear evidence of bad faith on the part of Respondent.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered <thebloombergfirm.com> May 23, 2012.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the protected mark or the disputed domain name containing it.
Respondent registered and passively held a confusingly similar disputed domain name containing Complainant’s protected mark and did so 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 (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:
The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant registered the BLOOMBERG marks—used in the distribution of financial news and information—with the USPTO as early as 1993 (e.g., Reg. No. 1,786,725, registered Aug. 10, 1993), which demonstrates its longstanding rights in the marks. See Compl., at Attached Ex. B. Additionally, Complainant registered various BLOOMBERG marks in numerous other jurisdictions around the world. See Compl., at Attached Ex. A. Registration of a mark with the USPTO and other entities sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel finds that Complainant established its rights in or to the BLOOMBERG marks under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its BLOOMBERG marks because it is composed entirely of the mark, with only three minor additions: the generic terms “the” and “firm,” and a “.com” gTLD. None of these, Complainant urges, sufficiently distinguishes the disputed domain name from its BLOOMBERG mark. The addition of generic words—particularly words like “firm,” which pertain to a Complainant’s corporate activities—fails to sufficiently distinguish domain names from registered marks. See Antoun v. Truth Squad, FA 114766 (Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"); see also AT&T Intellectual Property II, L.P. v Janelle Churilla / SuncomLLC, FA 1381381 (Forum Apr. 6, 2011) (concluding that the addition of the generic word “firm” to a registered mark does not avoid confusing similarity). Further, addition of the “.com” gTLD does not distinguish a domain from the protected mark; it also supports a finding of confusing similarity. See, e.g., AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, this Panel finds that the additions made to Complainant’s BLOOMBERG marks in <thebloombergfirm.com> do not avoid Internet user confusion, or differentiate the two pursuant to 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 and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under a Policy ¶ 4(a)(ii) analysis, 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 (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 (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 urges that Respondent has no rights or legitimate interests in the <thebloombergfirm.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has not authorized or licensed Respondent’s use of the BLOOMBERG mark, Complainant maintains that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel notes that the WHOIS information concerning <thebloombergfirm.com> identifies “Michael Goldstein” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. See Compl., at Attached Ex. C. As such, the Panel finds that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <thebloombergfirm.com> domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent’s use of the website is not a bona fide offering of goods and services and it is not a legitimate noncommercial or fair use. Complainant contends that the disputed domain name does not currently resolve to an active website and cannot be considered as having a “use” of any kind. See Compl., at Attached Ex. G. Absent clear preparations to use, inactive holding is generally not considered a bona fide offering or legitimate noncommercial or fair use. See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name). Therefore, this Panel agrees that Complainant sufficiently made its prima facie showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name containing Complainant’s protective mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (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).
Here, Complainant argues that Respondent’s bad faith is evidenced purely by the fact that Respondent registered <thebloombergfirm.com> with what could only have been actual notice of the BLOOMBERG trademarks—because the marks are so widely recognized, because Respondent chose to register a domain containing the marks, and because Respondent’s behavior in registering and then holding the domain passively supports findings of bad faith. Although constructive notice alone is insufficient for a finding of bad faith, this Panel finds Complainant’s evidence of actual notice is sufficient to support findings of actual knowledge and bad faith registration and use of the <thebloombergfirm.com> domain name pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). It is inconceivable the Respondent would have registered the disputed domain name containing Complainant’s famous mark but for that fame and to hold it passively suggests that Respondent is merely waiting for someone to make an offer for it. Complainant sufficiently raised the evidence to support findings of Respondent’s bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held a disputed domain name containing Complainant’s protected mark 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 <thebloombergfirm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 26, 2017
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