Bloomberg, L.P. v. David Cohen
Claim Number: FA0102000096600
The Complainant is Bloomberg, L.P., New York, NY, USA ("Complainant"). The Respondent is David Cohen, Boca Raton, FL, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "bloombergmd.com," "bloombergmd.net," "bloombergpa.com" and "bloombergpa.net" registered with Dotster.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. as Panelist.
The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 6, 2001; the Forum received a hard copy of the Complaint on February 6, 2001.
On February 8, 2001, Dotster confirmed by e-mail to the Forum that the domain names "bloombergmd.com," "bloombergmd.net," "bloombergpa.com," and "bloombergpa.net" are registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that the Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on February 12, 2001.
On February 13, 2001, pursuant to the Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The Complainant contends that the Respondent’s registration of the domain names is confusingly similar to the Complainant’s mark; that the Respondent has no rights or legitimate interests in the domain names; and that the Respondent registered and is using the domain names in bad faith.
The Respondent contends that he has the right to add the suffixes "pa" and "md" to surnames and register them as domain names.
1. The complaint is based upon the trademark and service mark BLOOMBERG, U.S. Reg. No. 2,045,947, and the trademark and service mark BLOOMBERG, Australia, Reg. No. 738215. The Complainant owns numerous U.S. and international trademark registrations for the mark BLOOMBERG, or containing the name BLOOMBERG, many of which are well known. The Complainant’s trademarks predate any use or registration of the domain names.
2. The Complainant is the owner of the following domain names: <bloomberg.com> registered September 29, 1993; <bloomberg.net> registered March 8, 1997; and <bloomberg.org> registered December 14, 1999. <Bloomberg.com> has been in continuous use by the Complainant since its registration in 1993.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;
(2) the 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.
Identical and/or Confusingly Similar
The Respondent’s domain names "bloombergmd.com," "bloombergmd.net," "bloombergpa.com" and "bloombergpa.net" are confusingly similar to the
Complainant's mark, BLOOMBERG. The domain names incorporate the famous mark BLOOMBERG in an attempt to garner the mark’s goodwill and recognition. See Chase Manhattan Corp. v. Whitely, D2000-0346 (WIPO June 12, 2000) (finding registration of domain name chasemerchantservices.com> by a credit card operating company is "inconceivable to this Panel that Respondent did not have in mind Complainant's famous, long-established and subsisting trademarks"). The Respondent’s registration of the domain names with the addition of a general noun to a registered mark does not add any uniqueness or distinguishing features to the existing trademark, BLOOMBERG. See Nokia Corporation v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that the addition of a general noun to a registered mark in domain name <nokiagirls.com> is of limited effect in distinguishing domain name from the trademark). The addition of letters "md" and "pa" fails to take away the distinguishing and recognition of the Complainant's famous mark. See Yahoo! Inc. v. Zviely, D2000-0273 (WIPO June 14, 2000) (finding confusing similarity between complainant's YAHOO! mark and 37 domain names incorporating the YAHOO! mark or a variant thereof).
Rights or Legitimate Interests
The Complainant has not licensed or permitted the Respondent to use the Complainant's mark, nor to apply for or use any domain name incorporating its mark. There is no evidence that the Respondent, before receiving notice of the dispute, used, or demonstrably prepared to use, the domain names in connection with a bona fide offering of services. Nor has the Respondent ever been commonly known by the disputed domain names. The Respondent has no rights or legitimate interests in respect of the domain names. Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate interests in domain names because it is not commonly known by complainant’s marks and respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where respondent registered domain name with intention of selling domain name).
Registration and Use in Bad Faith
In analyzing the totality of circumstances, it is evident that the Respondent registered and is using the domain names in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").
Bloomberg has a high profile presence in the financial sector and is the subject of substantial consumer recognition and goodwill. The domain <bloomberg.com> was registered by Complainant on September 29, 1993 and has been in continuous use since 1993. Under Section 22 of the United States Trademark
Act, the Respondent is charged with knowledge of the Complainant’s rights in its trademark. Section 22 of the United States Trademark Act, 15 U.S.C. § 1072, states that "[r]egistration of a mark on the Principle Register . . . shall be
constructive notice of the registrant's claim of ownership thereof." Therefore, the Respondent had constructive notice of the Complainant's rights in April 2000, when the domain names containing the mark BLOOMBERG were registered. See Barney’s Inc. v. BNY Bulletin Board, D2000-0059 (WIPO April 2, 2000) (finding registration and use of domain name in bad faith based upon actual or imputed knowledge of prior registration of an identical or confusingly similar trademark together with a willingness to accept consideration for transfer of the domain name). The Complainant’s high profile presence in the financial market and the fame of the Complainant’s mark would further tend to indicate that the Respondent was aware of the Complainant’s rights.
The Respondent also registered the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
Registering domain names with the intent of selling them in excess of out of pocket costs is evidence of bad faith registration and use. Policy ¶ 4(b)(i). See Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) (finding that respondent’s attempt to sell domain name in question on <greatdomains.com>, a domain name auction site, for $100,000 constitutes bad faith); General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that respondent registered and used domain name in bad faith by using domain name to direct users to a general site offering domain name for sale).
Accordingly, the Respondent registered and used the disputed domain names in bad faith.
Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(i) of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain names "bloombergmd.com," "bloombergmd.net," "bloombergpa.com" and "bloombergpa.net."
Charles K. McCotter, Jr., Panelist
Dated: February 19, 2001
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