Bloomberg Finance L.P. v. Shaun Jones
Claim Number: FA1709001751367
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York, USA. Respondent is Shaun Jones (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bioomberq.com>, registered with Gandi SAS.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2017; the Forum received payment on September 29, 2017.
On October 3, 2017, Gandi SAS confirmed by e-mail to the Forum that the <bioomberq.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 October 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@bioomberq.com. Also on October 4, 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 October 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. 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 made the following contentions.
Complainant has rights in the BLOOMBERG mark based upon registration with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003). See Compl., Attached Ex. B. Respondent’s <bioomberq.com> identical or confusingly similar to Complainant’s BLOOMBERG mark because it fully incorporates the mark and replaces the letter “l” with the letter “i” and the letter “g” with the letter “q” along with the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <bioomberq.com>. Respondent is not commonly known by the disputed domain name and complainant has not granted Respondent permission or license to use the BLOOMBERG mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, the domain name was identified in a malicious code found on a compromised corporate system and does not currently resolve to an active domain name. See Compl., Attached Ex. G.
Respondent has registered and used the disputed domain name in bad faith. Respondent must have had actual and/or constructive notice of Complainant’s mark before registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the largest providers of global financial news and data and related goods and services in the world.
2. Complainant has rights in the BLOOMBERG mark based upon registration of the mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003).
3. Respondent registered the <bioomberq.com> domain name on September 13, 2017.
4. The disputed domain name has been identified in a malicious code found on a compromised corporate system and does not currently resolve to an active domain name.
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.
In view of 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 draw such inferences it 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant, Bloomberg Finance L.P. is a financial software, data, and media company. In connection with this business complainant uses the BLOOMBERG mark to provide and market services. Complainant claims rights in the marks based upon its registration with the USPTO (e.g., Reg. No. 2,736,744, registered July 15, 2003). See Compl., Attached Ex. B. Registration of a mark with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds Complainant has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLOOMBERG mark. Complainant submits that Respondent’s <bioomberq.com> domain name is identical or confusingly similar to Complainant’s BLOOMBERG mark because it fully incorporates the mark and replaces the letter “l” with the letter “i” and the letter “g” with the letter “q” along with the “.com” gTLD. Creating visual similarity through misspelling a mark does not overcome a finding of confusing similarity. See generally Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). In Intelius, Inc., the “i” in the mark was replaced with an “l.” Here, the “l” in the mark is replaced with an “i.” Similarly here, the “g” in the BLOOMBERG mark is replaced with a “q.” The Panel agrees that the reasoning in Acme Lift Company, L.L.C. and Intelius apply here as Respondent has clearly attempted to create a visually deceptive domain name. Therefore, the Panel finds that the <bioomberq.com> domain name is confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 shifts to Respondent to show it does have 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s BLOOMBERG mark and has used it in its entirety in the domain name, making only minor spelling alterations;
(b)Respondent registered the <bioomberq.com> domain name on September 13, 2017.
(c) The disputed domain name has been identified in a malicious code found on a compromised corporate system and does not currently resolve to an active domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <bioomberq.com> domain name because Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the BLOOMBERG mark for any purpose. Where a response is lacking, WHOIS information can support a finding that respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Shaun Jones.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name;
(f)Complainant argues Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, the domain name was identified in a malicious code found on a compromised corporate system and does not currently resolve to an active domain name. See Compl., Attached Ex. G. Neither malware nor inactive holding may amount to rights and legitimate interests. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent made legitimate noncommercial or fair use of the Disputed Domain Name. Respondent is intentionally attempting to divert Internet users to its malware scam/survey website via the Disputed Domain and is therefore not making legitimate noncommercial, or fair use of the Disputed Domain pursuant to Policy ¶4(a)(ii).”); see also Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Here, Complainant provides a screenshot of computer code which allegedly indicates that Respondent has used the domain name in connection with malware, but does not provide evidence of the resolving website. The Panel understands that Complainant may well not have provided that evidence to avoid its own computer’s infection with malware. Therefore, the Panel accepts Complainant’s contentions coupled with the code displayed at Exhibit G, and finds Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the examples 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 bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding 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). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel will therefore consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant submits that Respondent had actual or constructive knowledge of Complainant’s mark. However, the Panel may disregard arguments of bad faith based on constructive notice as UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the BLOOMBERG mark and business because of the Complainant’s strong reputation and a high-profile presence in the financial and media sectors, and is the subject of substantial consumer recognition and goodwill. Coupled with the registration of a visually similar domain name, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BLOOMBERG mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bioomberq.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: October 30, 2017
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