Bloomberg Finance L.P. v. Private Whois / Knock Knock WHOIS Not There, LLC
Claim Number: FA1712001763435
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Private Whois / Knock Knock WHOIS Not There, LLC (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergbusinessweekresearch.com>, registered with Automattic Inc..
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 December 18, 2017; the Forum received payment on December 18, 2017.
On December 19, 2017, Automattic Inc. confirmed by e-mail to the Forum that the <bloombergbusinessweekresearch.com> domain name is registered with Automattic Inc. and that Respondent is the current registrant of the name. Automattic Inc. has verified that Respondent is bound by the Automattic Inc. 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 December 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2018 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@bloombergbusinessweekresearch.com. Also on December 20, 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 January 12, 2018, 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 registered the BLOOMBERG and BUSINESS WEEK marks with the United States Patent and Trademark Office (“USPTO”) (e.g. BLOOMBERG—Reg. No. 2,736,744, registered July 15, 2003; BUSINESS WEEK—Reg. No. 0,549,742, registered Oct. 23, 1951). See Compl. Exs. B, F. Respondent’s <bloombergbusinessweekresearch.com> domain name is confusingly similar to Complainant’s marks as it fully incorporates the BLOOMBERG and BUSINESS WEEK marks and adds only the generic word “research” as well as the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bloombergbusinessweekresearch.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent displays Complainant’s content without right or license and in violation of Complainant’s copyrights. See Compl. Ex. I.
Respondent registered and uses the <bloombergbusinessweekresearch.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG and BUSINESS WEEK marks prior to registration of the disputed domain name. Respondent failed to respond to Complainant’s cease-and-desist letter. See Compl. Ex. J.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are three Complainants in this matter: Bloomberg Finance L.P., Bloomberg Finance One L.P., and Bloomberg L.P.. Complainant, Bloomberg Finance L.P., submits that Bloomberg L.P. is an affiliate of Complainant and that Bloomberg Finance One L.P. is a wholly-owned subsidiary of Complainant.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. Similarly, in Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., D2009-1243 (WIPO, Nov. 6, 2009), the Panel upheld consolidation of multiple complainants where “Complainants are represented by a single authorized representative; each Complainant seeks the same remedy with respect to each disputed domain name; and the Complaint involves a single Respondent….” But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding and the proceeding may go forward on that basis.
The Complainants will be collectively be referred to as “Complainant.”
1. Complainant is a United States company and one of the world’s largest
providers of global financial news.
2. Complainant has established its trademark rights in the BLOOMBERG and BUSINESS WEEK marks by registering them with the United States Patent and Trademark Office (“USPTO”) (e.g. BLOOMBERG—Reg. No. 2,736,744, registered July 15, 2003; BUSINESS WEEK—Reg. No. 0,549,742, registered Oct. 23, 1951)
3. Respondent registered the <bloombergbusinessweekresearch.com> domain name on July 5, 2017.
4. Respondent displays Complainant’s content without right or license and in violation of Complainant’s copyrights.
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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the BLOOMBERG and BUSINESS WEEK marks based upon registration with the USPTO (e.g. BLOOMBERG—Reg. No. 2,736,744, registered July 15, 2003; BUSINESS WEEK—Reg. No. 0,549,742, registered Oct. 23, 1951). See Compl. Exs. B, F. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the BLOOMBERG and BUSINESS WEEK marks.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BLOOMBERG and BUSINESS WEEK marks. Complainant argues that Respondent’s <bloombergbusinessweekresearch.com> domain name is confusingly similar to Complainant’s marks as it fully incorporates the BLOOMBERG and BUSINESS WEEK marks and adds only the generic word “research” as well as the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the <bloombergbusinessweekresearch.com> domain name is confusingly similar to the BLOOMBERG and BUSINESS WEEK marks 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 and BUSINESS WEEK marks and to use them in its domain name, adding only the generic word “research” which encourages internet users to assume that the domain name relates to the research activities of Complainant;
(b) Respondent registered the <bloombergbusinessweekresearch.com> domain name on July 5, 2017;
(c) Respondent uses the domain name to display Complainant’s content without right or license and in violation of Complainant’s copyrights;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <bloombergbusinessweekresearch.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BLOOMBERG and BUSINESS WEEK marks. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the Registrar’s WHOIS identifies Respondent as “Vladimirs Fokins / Vladimirs Fokins.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <bloombergbusinessweekresearch.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent displays Complainant’s content without right or license and in violation of Complainant’s copyrights. Use of a disputed domain name to divert Internet users otherwise seeking a complainant to a respondent’s website demonstrates a failure to use said domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant submits that Respondent displays Complainant’s marks on the resolving page in an attempt to divert Internet users. See Compl. Ex. I. The Panel agrees with Complainant and finds Respondent lacks rights and legitimate interests in the disputed domain name.
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, Complainant submits Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG and BUSINESS WEEK marks prior to registration of the disputed domain name. The non-exclusive nature of Policy ¶ 4(b) allows for the consideration of additional factors in an analysis of a respondent’s conduct for bad faith per Policy ¶ 4(a)(iii). 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). Actual knowledge of a complainant’s rights in a mark prior to registration is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant submits that it registered the <bloomberg.com> domain name September 29, 1993 and the continuous use of the website since, in conjunction with the high-profile nature of Complainant, demonstrates Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG and BUSINESS WEEKS marks prior to registration of the <bloombergbusinessweekresearch.com> domain name. The Panel agrees with Complainant and finds bad faith per Policy ¶ 4(a)(iii).
Secondly, Complainant submits that Respondent failed to respond to Complainant’s cease-and-desist letter. Failure to respond to a cease and desist letter can further support a finding that a respondent registered and used a disputed domain name in bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides copies of cease-and-desist letters sent July 12, 2017 and December 15, 2017. See Compl. Ex. J. The Panel therefore agrees with Complainant and finds additional evidence of Respondent’s bad faith.
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 the domain name, Respondent registered and used it 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 <bloombergbusinessweekresearch.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 15, 2018
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