Bloomberg Finance L.P. v. China Capital Domain Fund Limited / Domain Administrator
Claim Number: FA1809001809736
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is China Capital Domain Fund Limited / Domain Administrator (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloombergprofessiojal.com>, <bloombergafccomodation.com>, <bloombergcw.com>, <bloomberg-optimimedia.com>, <bloomberg-wirelless.com>, <bloombergmarketrnews.com>, <bloombergpirvatewealth.com>, <bloomberg-fiinancial.com>, <bloombergpersonalfinnance.com>, and <bloombergmarketfews.com> (“Domain Names”) registered with NameSilo, 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 Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2018; the Forum received payment on September 28, 2018.
On October 1, 2018, (and October 29, 2018 in the case of <bloombergmarketfews.com>) NameSilo, LLC confirmed by e-mail to the Forum that the <bloombergprofessiojal.com>, <bloombergafccomodation.com>, <bloombergcw.com>, <bloomberg-optimimedia.com>, <bloomberg-wirelless.com>, <bloombergmarketrnews.com>, <bloombergpirvatewealth.com>, <bloomberg-fiinancial.com>, and <bloombergpersonalfinnance.com>, and <bloombergmarketfews.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@bloombergprofessiojal.com, postmaster@bloombergafccomodation.com, postmaster@bloombergcw.com, postmaster@bloomberg-optimimedia.com, postmaster@bloomberg-wirelless.com, postmaster@bloombergmarketrnews.com, postmaster@bloombergpirvatewealth.com, postmaster@bloomberg-fiinancial.com, postmaster@bloombergpersonalfinnance.com, postmaster@bloombergmarketfews.com. Also on October 2, 2018, 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, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a subsidiary of Bloomberg, L.P., is a Delaware limited partnership that operates under the BLOOMBERG mark. Complainant has rights in the BLOOMBERG mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered Jul. 15, 2003). Respondent’s <bloombergprofessiojal.com>, <bloombergafccomodation.com>, <bloombergcw.com>, <bloomberg-optimimedia.com>, <bloomberg-wirelless.com>, <bloombergmarketrnews.com>, <bloombergpirvatewealth.com>, <bloomberg-fiinancial.com>, <bloombergpersonalfinnance.com>, and <bloombergmarketfews.com> domain names are confusingly similar to Complainant’s BLOOMBERG mark as they incorporate the mark in its entirety, while adding a descriptive, misspelled term (“professiojal,” “afccomodation,” “optimimedia,” “wirelless,” “marketrnews,” “pirvatewealth,” “personalfinnance,” and “marketfews”) and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bloombergprofessiojal.com>, <bloombergafccomodation.com>, <bloombergcw.com>, <bloomberg-optimimedia.com>, <bloomberg-wirelless.com>, <bloombergmarketrnews.com>, <bloombergpirvatewealth.com>, <bloomberg-fiinancial.com>, <bloombergpersonalfinnance.com>, and <bloombergmarketfews.com> Domain Names. Respondent is not licensed or otherwise permitted to use Complainant’s BLOOMBERG mark and is not commonly known by any of the Domain Names. Additionally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Domain Names do not resolve to an active website.
Respondent registered and uses the <bloombergprofessiojal.com>, <bloombergafccomodation.com>, <bloombergcw.com>, <bloomberg-optimimedia.com>, <bloomberg-wirelless.com>, <bloombergmarketrnews.com>, <bloombergpirvatewealth.com>, <bloomberg-fiinancial.com>, <bloombergpersonalfinnance.com>, and <bloombergmarketfews.com> Domain Names in bad faith. Respondent failed to respond to Complainant’s cease and desist letter. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the BLOOMBERG mark prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BLOOMBERG mark. Each of the Domain Names is confusingly similar to Complainant’s BLOOMBERG mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and uses each of the Domain Names 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:
(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).
Complainant has rights in the BLOOMBERG mark based upon its registration with the USPTO. Registration with USPTO is sufficient to establish rights in a mark pursuant to 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)).
The Panel finds that each of the <bloombergprofessiojal.com>, <bloombergafccomodation.com>, <bloombergcw.com>, <bloomberg-optimimedia.com>, <bloomberg-wirelless.com>, <bloombergmarketrnews.com>, <bloombergpirvatewealth.com>, <bloomberg-fiinancial.com>, <bloombergpersonalfinnance.com>, and <bloombergmarketfews.com> Domain Names are confusingly similar to the BLOOMBERG mark. Each of the Domain Names fully incorporates the BLOOMBERG Mark adding only a letter pair (“cw”) or descriptive, misspelled terms (“professiojal,” “afccomodation,” “-optimimedia,” “-wirelless,” “marketfews,” “-fiinancial,” “pirvatewealth,” “personalfinnance,” and “marketrnews”) and the gTLD “.com.” Adding a generic or descriptive term, a hyphen, or a gTLD to a fully incorporated mark may not sufficiently mitigate any confusing similarity between a disputed domain name and the mark under a Policy ¶ 4(a)(i) analysis. See PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term “vacations” in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”); see also Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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) and 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 holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BLOOMBERG mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a 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 WHOIS lists “China Capital Domain Fund Limited” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
None of the Domain Names resolves to an active website and there is no other basis to conclude that the Domain Names are used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the period in which the Domain Names were registered, March 19-23, 2018, it is likely that Respondent had actual knowledge of Complainant’s well-known BLOOMBERG mark. There is no obvious explanation, nor has one been provided, for an entity to register 10 domain names that reproduce the BLOOMBERG Mark along with misspellings of descriptive words, many of which describe the services offered by Complainant, other than to take advantage of Complainant’s reputation in the BLOOMBERG Mark, a reputation developed over 30 years of use. In the absence of rights or legitimate interests this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the BLOOMBERG Mark from reflecting is mark in the corresponding domain names. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent has, without explanation, registered 10 domain names that reproduce the BLOOMBERG Mark. This constitutes bad faith registration and use under Policy ¶¶ 4(b)(ii)
The Panel finds Complainant has satisfied 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 <bloombergprofessiojal.com>, <bloombergafccomodation.com>, <bloombergcw.com>, <bloomberg-optimimedia.com>, <bloomberg-wirelless.com>, <bloombergmarketrnews.com>, <bloombergpirvatewealth.com>, <bloomberg-fiinancial.com>, <bloombergpersonalfinnance.com>, and <bloombergmarketfews.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 30, 2018
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