Bloomberg Finance L.P. v. Benjamin West / Top Media LTD
Claim Number: FA1706001734780
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York, USA. Respondent is Benjamin West / Top Media LTD (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberghedgefund.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 6, 2017; the Forum received payment on June 6, 2017.
On June 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloomberghedgefund.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 June 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@bloomberghedgefund.com. Also on June 7, 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 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. 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
Operating under the BLOOMBERG mark, Complainant is one of the world’s largest providers of financial news and data and related goods and services.
Complainant holds a registration for the BLOOMBERG trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,430,969, registered May 20, 2008.
Respondent registered the domain name <bloomberghedgefund.com> on September 9, 2013.
The domain name is confusingly similar to Complainant’s BLOOMBERG mark.
Complainant has not licensed or otherwise authorized Respondent to use its BLOOMBERG mark in any fashion.
Respondent has not been commonly known by the domain name.
Respondent uses the domain name to resolve to a website displaying third-party hyperlinks to websites unrelated to Complainant’s business.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the BLOOMBERG mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the BLOOMBERG trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (determining that a UDRP complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in those marks under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its BLOOMBERG mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the United Kingdom). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bloomberghedgefund.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark. The domain name contains the mark in its entirety, merely appending the generic term “hedge fund,” which describes an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Eastman Chem. Co. v. Patel, FA 524752 (Forum September 7, 2005):
Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, … , and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
The former of these considerations adheres because Respondent’s introduction to the domain name of a term descriptive of Complainant’s business makes clear that the confusing similarity between the domain name and the mark is not accidental, the latter because every domain name requires a gTLD.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and that Respondent does not deny, that Respondent has not been commonly known by the domain name <bloomberghedgefund.com>, and that Complainant has not licensed or otherwise authorized Respondent to use its BLOOMBERG mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “BENJAMIN WEST,” which does not resemble the domain name.
On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its mark in any domain name registration). See also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified “Fred Wallace” as registrant of the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <bloomberghedgefund.com> domain name to promote links to the websites of unrelated third parties. In the circumstances here obtaining, we may comfortably presume that Respondent profits financially from this use of the domain name, whether in the form of receipt of click-through fees or otherwise. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under ¶ 4(c)(iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015):
The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence in the record before us that Respondent knew of Complainant and its rights in the BLOOMBERG mark when it registered the offending <bloomberghedgefund.com> domain name. This stands as proof of Respondent’s registration of the domain name in bad faith. See, for example, Univision Comm. Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in its mark when it registered that confusingly similar domain name).
We are also convinced by the evidence that Respondent’s employment of the
<bloomberghedgefund.com> domain name, which is confusingly similar to Complainant’s BLOOMBERG trademark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent’s expected use of a disputed domain name, which was confusingly similar to the mark of a UDRP complainant, would likely mislead Internet users to believe that the domain name was connected with that complainant, thus justifying a conclusion of bad faith registration and use on the part of that respondent).
Therefore, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bloomberghedgefund.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 5, 2017
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