Bloomberg L.P. v. GAF c/o Thomas Pearson
a/k/a Tom Pearson
Claim Number: FA0308000190615
PARTIES
Complainant
is Bloomberg L.P., New York, NY
(“Complainant”) represented by Alexander
Kim. Respondent is GAF c/o Thomas Pearson a/k/a Tom Pearson, El Cajon, CA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <E-Bloomberg.us>, <Bloomberg-news.us>, and <Bloomberg-web.us>, registered
with Names4Ever.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 26, 2003; the Forum received a hard copy of the
Complaint on September 4, 2003.
On
September 4, 2003, Names4Ever confirmed by e-mail to the Forum that the domain
names <E-Bloomberg.us>, <Bloomberg-news.us>, and <Bloomberg-web.us> are registered
with Names4Ever and that Respondent is the current registrant of the
names. Names4Ever has verified that
Respondent is bound by the Names4Ever registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On
September 8, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 29, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 10, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the 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 domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain names are confusingly similar to Complainant’s BLOOMBERG and
BLOOMBERG NEWS marks.
Respondent lacks rights and legitimate
interests in respect of the domain names.
Respondent registered and used the domain
names in bad faith.
B.
Respondent
Respondent did not submit a Response
in this proceeding.
FINDINGS
Complainant company Bloomberg L.P. was
founded in 1983 by Michael R. Bloomberg, now mayor of New York City. Complainant is one of the largest providers
of worldwide financial news and information as well as related goods and services. Recognized worldwide as a leading financial
information and analysis source, Complainant employs nearly 8,000 employees in
over 100 offices. Complainant owns
registered U.S. trademarks in BLOOMBERG and BLOOMBERG NEWS, registered in 1997
and 1999, respectively, as well as trademarks registered in other countries.
Respondent registered the <Bloomberg-news.us> domain name
on February 3, 2003 and the <E-Bloomberg.us>
and <Bloomberg-web.us>
domain names on February 18, 2003.
Respondent has not provided evidence that the domain names have been
used for any purpose.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant has established its rights in
the BLOOMBERG and BLOOMBERG NEWS marks through continuous use in commerce and
registration in the United States and other countries.
Each of the disputed domain names wholly
incorporates Complainant’s BLOOMBERG mark along with a generic or descriptive
term. The <E-Bloomberg.us> and <Bloomberg-web.us>
domain names merely add an Internet-descriptive prefix or suffix and the <Bloomberg-news.us> domain name
includes the word “news,” which renders the domain name nearly identical to
Complainant’s BLOOMBERG NEWS mark. See
Crédit Lyonnais v. Ass’n Etre
Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the
letter “e” and a hyphen does not affect the power of the mark in determining
confusing similarity); see also Broadcom
Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding
the <broadcomonline.com> domain name is confusingly similar to
Complainant’s BROADCOM mark); see also Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO
Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar
Complainant’s GAME BOY mark, even though the domain name is a combination of
two descriptive words divided by a hyphen).
Accordingly, the Panel finds that each of
the disputed domain names is confusingly similar to Complainant’s marks, and
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not proffered any evidence
of rights or legitimate interests it may have in the domain names that would be
recognized under the Policy. Thus, the
Panel may presume that Respondent lacks such rights and legitimate interests in
the names. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Furthermore, there is no evidence
Respondent holds a trademark or service mark identical to any of the domain
names pursuant to Policy ¶ 4(c)(i), nor is there evidence Respondent is
commonly known by any of the disputed domain names pursuant to Policy ¶
4(c)(iii). See CDW Computer Ctrs.,
Inc. v. Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding that,
because Respondent did not come forward with a Response, the Panel could infer
that Respondent had no trademark or service marks identical to <cdw.us>
and therefore had no rights or legitimate interests in the domain name); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark).
As Respondent has not used the domain
names and has declined to provide any evidence of its preparations to the use
the names, the Panel concludes that Respondent has no rights in the names with
respect to Policy ¶¶ 4(c)(ii) & (iv).
See Pharmacia & Upjohn
AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where Respondent failed to submit a Response to the
Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, Respondent had not used the domain names in connection with any type
of bona fide offering of goods and services).
The Panel finds that Respondent has no
rights or legitimate interests in respect of the disputed domain names, and
thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has not made use of the
disputed domain names, but the usTLD Policy does not require Complainant to
prove bad faith registration and use of the names, only bad faith
registration or use. By
registering several domain names that fully incorporate Complainant’s mark, one
of which relates specifically to Complainant’s news business, Respondent has
demonstrated that its purpose in registering the names was to either sell them
to Complainant or deny Complainant the opportunity to register them, or to use
them misleadingly to ensnare Internet users seeking Complainant’s websites in
the future.
Thus, Respondent’s pattern of conduct
demonstrates bad faith registration within the meaning of Policy ¶
4(a)(iii). See CDW Computer Ctrs.,
Inc. v. Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding bad
faith where “any future use of the domain name by Respondent will cause
confusion among Internet users as to the source or sponsorship of the attached
website”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite Respondent’s
decision to passively hold the disputed domain name, “Respondent has made its
intention clear and the continuing threat hanging over the Complainant’s head
constitutes bad faith use”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <E-Bloomberg.us>, <Bloomberg-news.us>, and <Bloomberg-web.us> domain names
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 22, 2003
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page