Bloomberg Finance L.P. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1810001814496
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <401kbloomberg.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 known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2018; the Forum received payment on October 31, 2018.
On November 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <401kbloomberg.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 November 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@401kbloomberg.com. Also on November 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 November 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant engages in the business of electronic trading, financial news, analytics, and information industries. Complainant has become one of the largest providers of global financial news and data and related goods and services and is recognized and trusted worldwide as a leading source of financial information and analysis.
Complainant has rights in the BLOOMBERG mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <401kbloomberg.com> domain name is confusingly similar to Complainant’s mark as it only adds the term “401k” to Complainant’s mark.
Respondent has no rights or legitimate interests in the <401kbloomberg.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 domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to provide advertising links to third-party websites.
Respondent registered and uses the <401kbloomberg.com> domain name in bad faith. Given 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, Respondent undeniably had actual knowledge of Complainant’s rights in the BLOOMBERG mark when it registered the domain name. Further, Respondent failed to respond to Complainant’s cease and desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO trademark registration for its BLOOMBERG mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the BLOOMBERG mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent use the at-issue domain name display advertising links to third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s at-issue domain name contains Complainant’s BLOOMBERG trademark prefixed with the suggestive term “401k”, all followed by the top-level domain name “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <401kbloomberg.com> domain name is confusingly similar to Complainant’s BLOOMBERG trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also, Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 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.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the <401kbloomberg.com> domain name lists “Carolina Rodrigues / Fundacion Comercio Electronico” as its registrant. There is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain. Therefore, the Panel concludes that Respondent is not commonly known by the <401kbloomberg.com> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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.)
Additionally, Respondent uses the domain name to provide advertising links referencing third-party websites. For example, the <401kbloomberg.com> webpage displays advertising links such as “401K Retirement Plan” and “401K Pension Plan.” Using the confusingly similar <401kbloomberg.com> domain name in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <401kbloomberg.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) specific bad faith circumstances, as well as other circumstance, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above with regard to rights and legitimate interests, Respondent uses Respondent’s confusingly similar domain name to address a webpage which displays advertising links referencing third party websites. Respondent undoubtedly receives some benefit from such links and in so doing is exploiting internet user confusion between Respondent’s domain name and Complainant’s well known trademark. Such use demonstrates Respondent’s bad faith registration and use of the <401kbloomberg.com> domain name pursuant to Policy ¶ 4(a)(iv). See Bloomberg Finance L.P. v. PPA Media Services / Ryan G Foo, FA 1478654 (Forum Feb. 12, 2013) (finding bad faith under Policy ¶ 4(a)(iv) where respondent capitalized on consumer confusion regarding the sponsorship of respondent’s <utvbloomberg.com> domain name and where the domain name addressed a website offering commercial advertising links.)
Additionally, given Complainant’s reputation and high-profile presence in the financial and media sectors, Respondent must have had actual knowledge of Complainant's rights in the BLOOMBERG mark before registering the <401kbloomberg.com> domain name. The combination of Complainant’s well known mark with the suggestive financially related term “401k” in Respondent’s domain makes the Panel’s finding all the more compelling. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark thus indicates that Respondent registered and used the <401kbloomberg.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, Northwest Airlines, Inc. v. Mario Koch, FA 95688, (Forum Oct. 27, 2000) ("The selection of a domain name which entirely incorporates the name of the world's fourth largest airline could not have been done in good faith").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <401kbloomberg.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 26, 2018
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