Bloomberg Finance L.P. v. Douglas Presutti
Claim Number: FA1809001808860
Complainant: Bloomberg Finance L.P. of New York, New York, United States of America.
Respondent: Douglas Presutti of Hoboken, New Jersey, United States of America.
REGISTRIES and REGISTRARS
Registry: Afilias plc
Registrar: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Alan L. Limbury, as Examiner.
Complaint submitted: September 25, 2018
Commencement: September 27, 2018
Response Date: September 27, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure, Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Bloomberg L.P., a limited partnership related to Complainant, is the proprietor of United States Federally registered trademark BLOOMBERG, No.3,430,969, registered on May 20, 2008. Complainant and other companies within the same group have been engaged in electronic trading, financial news, and information businesses under BLOOMBERG marks since at least 1993.
The domain name was registered on May 20, 2018. It resolves to a Registrar parking page containing what appear to be PPC advertising links to financial news and information sites.
URS Procedure 1.2.6 requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
· the domain name is identical or confusingly similar to a word mark (i) for which the Complainant holds a valid national or regional registration and that it is in current use…
· the Registrant has no legitimate right or interest to the domain name; and
· the domain name was registered and is being used in bad faith.
Complainant says it bases this proceeding upon the famous trademark and service mark BLOOMBERG, U.S. Reg. No. 3,430,969 and related family of marks including U.S. Reg. Nos. 2,736,744, 4,674,394, and 4,875,272 (“Complainant’s BLOOMBERG Marks”), which are owned by Complainant’s subsidiary, Bloomberg Finance One L.P. Complainant’s Marks are strong and have gained secondary meaning through their continuous use in connection with Complainant’s electronic trading, financial news, and information businesses since at least 1993.
Complainant says the domain name is confusingly similar to the famous BLOOMBERG trademarks. Respondent does not deny this and the Examiner accepts that, taking the domain name in its entirety, the domain name is confusingly similar to the BLOOMBERG trademark. Complainant has demonstrated that evidence of use of the BLOOMBERG mark has been validated by the Trademark Clearinghouse. This shows that the mark is in current use pursuant to URS Procedure 18.104.22.168.a. Although mark No.3,430,969 is registered in the name of Bloomberg L.P., the Examiner is prepared to treat Complainant, a member of the same group, as the registrant of the BLOOMBERG trademark for the purposes of this proceeding, having regard to the numerous other BLOOMBERG marks registered by Complainant’s subsidiary Bloomberg Finance One L.P. Accordingly, Complainant has established this element.
Complainant says it has not licensed or otherwise permitted Respondent to use Complainant’s BLOOMBERG Marks nor to apply for nor use any domain name incorporating that mark. There is no evidence to suggest that the Respondent is commonly known by the name “Bloomberg.” Moreover, Respondent’s current and apparently only use of the Domain Name is to display third party advertising links. Therefore, Respondent cannot claim a right or legitimate interest in the domain name based on its use of the Domain Name or a corresponding name in connection with a bona fide offer of goods or services. Additionally, Complainant avers that Respondent has no legitimate interest in and no valid basis to claim non-commercial fair use of Complainant’s BLOOMBERG Marks.
Complainant’s assertions suffice to establish a prima facie case of absence of rights or legitimate interests on the part of Respondent. Respondent does not deny Complainant’s assertions. The Examiner finds that Complainant has established that Respondent has no legitimate right or interest to the domain name.
Complainant says it has a strong reputation and a high-profile presence in the financial and media sectors and is the subject of substantial consumer recognition and goodwill. Hence Respondent was aware of Complainant’s BLOOMBERG Marks before registering the domain name. Indeed, arbitrators have routinely found bad faith in circumstances where it is unlikely the registrant would have selected a Bloomberg domain name without knowing the reputation of the well-known trademark in question.
Respondent says in relation to each element: “I have no response. I registered the domain name unknowing of the ramifications.” Respondent attaches correspondence showing that he attempted unsuccessfully to transfer the domain name to Complainant before the Complaint was filed, saying: “I am just a regular guy trying to do the right thing after unknowingly causing a stir and am making a good faith effort to make things right.”
Respondent adds in relation to the third element: “I would like to point out I registered the domain name not long ago (in May I believe) and have done literally nothing with it. I am not running ads on this or making any money off of this whatsoever.” As to whether the Complaint was brought in an abuse of the URS process or contains material falsehoods, Respondent says: ”I don't think there are any "material falsehoods" but I do think, if you look at the correspondence, I was trying to resolve this consistent with their ask and filing a complaint was unnecessary.”
The Examiner accepts that the BLOOMBERG mark is famous and finds that Respondent must have been aware of that mark when registering the domain name and did so in order to attract Internet users searching for Complainant or a member of its group. The fact that, only a few months after registration, the domain name does not resolve to a website designed by Respondent does not detract from such improper purpose. Accordingly, the Examiner finds that the domain name was registered in bad faith.
As to use, contrary to Respondent’s assertion that he is “not running ads on this”, it is well established that a domain name registrant is responsible for PPC ads placed on Registrar parking pages even though not placed there by the registrant and even though the registrant may not have profited directly. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 3.5 and the cases there cited. Accordingly, the Examiner finds that the domain name is being used in bad faith.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence. The Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration: <bloomberg.bet>.
Alan L. Limbury, Examiner
Dated: September 30, 2018
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