Bloomberg L.P.
v. Dedicom Ltd.
Claim Number: FA0105000097132
PARTIES
Complainant is Bloomberg L.P., New York, NY, USA (“Complainant”) represented by Alexander Kim. Respondent is Dedicom Ltd., London, UK (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <isawitonbloomberg.com> registered with Tucows, Inc.
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.
Judge Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2001; the Forum received a hard copy of the Complaint on May 7, 2001.
On May 2, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <isawitonbloomberg.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 May 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@isawitonbloomberg.com by e-mail.
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 June 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.” 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 domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <isawitonbloomberg.com> domain name is confusingly similar to Complainant’s federally registered trademark.
Respondent has no rights or legitimate interests in the <isawitonbloomberg.com> domain name.
Respondent registered and used the <isawitonbloomberg.com> domain name in bad faith.
B. Respondent
No response was received from Respondent.
FINDINGS
Since 1983, Complainant has become one of the largest providers, worldwide, of financial news and information and related services. Complainant registered the trademark and service mark BLOOMBERG, March 18, 1997, on the Principal Register of the United States Patent and Trademark Office as Registration No. 2,045,947.
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 Complainant since its registration in 1993. In addition, Complainant has registered over 400 other domain names incorporating the word “bloomberg.”
Respondent registered the <isawitonbloomberg.com> domain name on November 13, 2000. Respondent has failed to develop the website since its registration.
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(e), 14(a) and 15(a) 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;
(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 <isawitonbloomberg.com> domain name contains the BLOOMBERG federally registered mark in its entirety, combined with the generic words “i saw it on.” The addition of the generic words to Complainant’s trademark makes the disputed domain name confusingly similar to Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also United Feature Syndicate, Inc. v. All Bus. Matters, Inc., D2000-1199 (WIPO Nov. 14, 2000) (finding that the addition of the words “farewell to” and “goodbye” to Complainant’s famous CHARLIE BROWN mark makes the disputed <farewelltocharliebrown.com> and <goodbyecharliebrown.com> confusingly similar).
The panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <isawitonbloomberg.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).
The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <isawitonbloomberg.com> domain name and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent’s passive holding of the disputed domain name is also evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Furthermore, bad faith is evidenced by the obvious connection the <isawitonbloomberg.com> domain name has with the Complainant’s enterprise, as it incorporates Complainant’s famous BLOOMBERG mark in its entirety. Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain name combined with its offer to sell it in excess of out-of-pocket expenses supports a finding of bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <isawitonbloomberg.com> domain name be transferred from Respondent to Complainant.
Honorable Ralph Yachnin (Ret), Panelist
Dated: June 7. 2001
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