DECISION

 

Bloomberg Finance L.P. v. Super Privacy Service LTD c/o Dynadot

Claim Number: FA1912001877396

 

PARTIES

Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Paul Ramundo of Bloomberg L.P., United States. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <quicktakebybloomberg.com>, registered with Dynadot, LLC.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 31, 2019; the Forum received payment on December 31, 2019.

 

On January 2, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <quicktakebybloomberg.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2020 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@quicktakebybloomberg.com.  Also on January 6, 2020, 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 29, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the BLOOMBERG trademark based on its ownership of the trademark registrations described below.

 

Complainant also claims rights in the BLOOMBERG mark at common law as a result of the reputation established by extensive use of the BLOOMBERG mark internationally, including on the Internet.

 

Complainant submits that since the inception of its business in 1981, and the adoption of the “Bloomberg” name in 1987, Complainant, which is headquartered in New York City, 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. There are currently over 320,000 Bloomberg Terminal subscribers worldwide. Complainant employs 19,000 people in 176 locations around the world.

 

Complainant asserts that its <bloomberg.com> domain name has been in continuous use by Complainant and its predecessor in interest since its registration in 1993. In addition, Complainant states that it owns over 3,000 other domain names incorporating the word “bloomberg,” including many defensive registrations spelling the name and mark “bloomberg” incorrectly.

Complainant submits that on its face, the disputed domain name is confusingly similar to its BLOOMBERG trademark as it fully incorporates the BLOOMBERG mark and adds only the words “quick take by” in a blatant attempt to garner the goodwill and recognition of the Complainant’s mark. Complainant has a news service named “Quicktake by Bloomberg” for which it applied to register as a trademark only four days before the disputed domain name was registered.

 

Complainant argues that given the close similarity between Complainant’s mark and the disputed domain name it is likely that an Internet user would mistakenly believe the website accessible by the URL <quicktakebybloomberg.com> is affiliated with Complainant.

 

Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name arguing that there is no evidence to suggest that Respondent is commonly known by the BLOOMBERG name. Citing Bloomberg Finance L.P. v. Esmeralda Ortega, Forum Case Number FA1706001734794 (finding “that there is no evidence in the record to find that Respondent is commonly known by the disputed domain names”).

 

Complainant asserts that it has not licensed or otherwise permitted Respondent to use any of Complainant’s trademarks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.

 

Complainant alleges that Respondent registered and is using the disputed domain name in order to trade upon Complainant’s global reputation. As a result, Respondent cannot claim a right or legitimate interest in the disputed domain name based on the notion that it has used the disputed domain name corresponding name in connection with a bona fide offering of goods or services. See Bloomberg L.P. v. Bloomberg Realty (India) Private Limited, Forum Case Number FA1204001439263, (“Use of a domain name which intentionally trade on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”).

 

Additionally, Complainant submits that the above circumstances show that Respondent never intended to provide a legitimate, non-commercial fair use of the disputed domain name. Complainant additionally has annexed a copy of a cease and desist letter sent on December 13, 2019 to Respondent at the e-mail address listed on Respondent’s WHOIS information. No response had been received on the date of the Amended Complaint.

 

Complainant submits that the disputed domain name was registered and is being used in bad faith, asserting that 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. The <bloomberg.com> domain name was registered by Complainant on September 29, 1993 and has been in continuous use since 1993. Complainant submits that such facts and Respondent’s use of the BLOOMBERG mark lead inescapably to the conclusion that Respondent was aware of Complainant’s BLOOMBERG trademark before registering the disputed domain name.

 

Complainant argues that it is unlikely the registrant would have selected a domain name incorporating the BLOOMBERG mark without knowledge of the reputation of the well-known trademark in question. Complainant cites the decision in Bloomberg Finance L.P. v. Bloomberg Investments, Forum Case Number FA1603001665140, where the panel agreed with Complainant relative to Respondent's actual knowledge and found that the respondent registered the domain name at issue in bad faith. Complainant also  cites the decision in Bloomberg L.P. v The International Capital Group, Inc., Forum Case Number FA0102000096607 (“. . . given the worldwide nature of Complainant’s business and development of its mark, it is reasonable to conclude that the Respondent knew or had constructive notice of Complainant’s well-established mark prior to registering the disputed domain name. This also is evidence of bad faith”).

 

Complainant has provided evidence, in the form of a screen capture of the website to which the disputed domain name currently points which offers the disputed domain name for sale for nine hundred and ninety dollars.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Claimant has provided uncontested evidence of its rights in the BLOOMBERG trademark and service mark BLOOMBERG inter alia acquired through its ownership of

·         Chilean registered trademark BLOOMBERG, registration number 1035931, registered on August 26 2013 for services in class 35.

 

·         Chilean registered trademark BLOOMBERG, registration number 1226380 registered on 16 January 2017 for services in classes 36, 38 and 41.

 

·         Chilean registered  trademark BLOOMBERG, registration number 1226381 registered on 16 January 2017 for goods in classes 9 and 16;

 

Complainant also claims ownership of a number of Czech and South Korean registrations for the BLOOMBERG mark and asserts that the one of its subsidiary enterprises Bloomberg Finance One L.P., owns a portfolio of trademarks and service mark registrations containing the word BLOOMBERG in the United States.

 

Complainant has an established Internet presence and is the owner of the domain names <bloomberg.com>, registered September 29, 1993, and <bloomberg.net>, registered March 8, 1997 which resolve to Complainant’s website

 

The disputed domain name was registered on December 10, 2019 and currently resolves to a website where the domain is available to purchase for nine hundred and ninety dollars.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant has adduced uncontested evidence of its ownership of the BLOOMBERG trademark acquired though its ownership of the abovementioned trademark registrations and its extensive use of the BLOOMBERG mark described in its submissions.

 

The disputed domain name is confusingly similar to its BLOOMBERG trademark as it fully incorporates the BLOOMBERG mark which is the dominant and only distinctive element of the disputed domain name. The additional wording “quick take by” have no distinguishing character except that it appears that they were chosen to reference a news service entitled “Quicktake by Bloomberg” established by Complainant.

 

Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that  there is no evidence to suggest that Respondent is commonly known by the BLOOMBERG name; that it has not licensed or otherwise permitted Respondent to use any of Complainant’s trademarks; that Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating the BLOOMBERG mark; that Respondent registered and is using the disputed domain name in order to trade upon Complainant’s global reputation and cannot claim use of the disputed domain name in connection with a bona fide offering of goods or services; and that the above circumstances show that Respondent never intended to provide a legitimate, non-commercial fair use of the disputed domain name as it is offered for sale on the website to which it resolves.

 

In such circumstances the burden of production shifts to Respondent to prove that it has rights or legitimate interests. Respondent has not responded to Complainant’s case and therefore has not discharged the burden of production.

 

This Panel finds therefore that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

On the evidence adduced the disputed domain name was registered with Complainant’s BLOOMBERG mark in mind. Not only is the BLOOMBERG mark distinctive but disputed domain name expressly references the news service entitled “Quicktake by Bloomberg” established by Complainant.

 

The disputed domain name resolves to a website which offers the disputed domain name for sale for sale for nine hundred and ninety dollars.

 

There is no evidence or circumstances on record indicating that the disputed domain name was registered or acquired for any reason other than for the primary purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the BLOOMBERG mark or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

 

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <quicktakebybloomberg.com> domain name be TRANSFERRED from Respondent to Complainant.

 

_______________________

 

 

James Bridgeman SC

Panelist

Dated: January 30, 2020

 

 

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