Bloomberg L.P.
v. Affluent Harbor Holdings Inc.
Claim Number: FA0106000097352
PARTIES
Complainant is Bloomberg L.P., New York, NY, USA (“Complainant”) represented by Alexander Kim. Respondent is Affluent Harbor Holdings Inc., North Bergen, NJ, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is "chinabloomberg.com" registered with Network Solutions.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 4, 2001; the Forum received a hard copy of the Complaint on June 4, 2001.
On June 5, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "chinabloomberg.com" is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 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 June 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 25, 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@chinabloomberg.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 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant urges the following:
· Respondent's registration of the BLOOMBERG name is confusingly similar to Complainant's mark.
·
Respondent has no right or legitimate interest in “chinabloomberg.com”
· Respondent registered domain name in bad faith
B. Respondent did not respond to the Complaint.
FINDINGS
Complainant is the owner and bona fide senior user of the BLOOMBERG trade name.
Complainant, a Delaware limited partnership, has been in business since 1983.
The complaint is based upon Complainant’s ownership of the trademark and service mark BLOOMBERG, U.S. Reg. No. 2,045,947, and trademark and service mark BLOOMBERG, People's Republic of China, Reg. Nos. 1135550, 1105200, 1125919, 1125956, 1125929, 1125804, and 1123838.
Complainant's substantial advertising and promotion of Complainant's BLOOMBERG
marks, its Bloomberg trade name, and its domain names have created significant
goodwill and widespread consumer recognition. Since its inception in 1983, Complainant has become one of the largest providers of worldwide financial news and information and related goods and services. Complainant is headquartered in New York and serves clients in more than 100 countries with 9 sales offices, 2 data centers, and 78 news bureaus worldwide
Complainant is engaged in business activities worldwide, and in Asia, including but
not limited to China and Japan.
Respondent registered "chinabloomberg.com" on August 16, 1999. There is no evidence that Respondent has used nor that Respondent has made demonstrable preparations to use the domain name.
Respondent failed to reply and provide any evidence of rights to or legitimate non-
commercial or fair use of the domain names in reply to the letter by Complainant dated April 23, 2001.
Complainant has not licensed or otherwise permitted Respondent to use the
Complainant's marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
Respondent has never been commonly known by BLOOMBERG and has never acquired trademark or service mark in such name.
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 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 to or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
As required by Policy ¶ 4(a)(i), Complainant has submitted evidence of rights in the BLOOMBERG mark. The domain name “chinabloomberg.com” incorporates the BLOOMBERG mark in its entirety. The addition of the word “China” does not sever the link between the BLOOMBERG mark and Complainant’s business. Therefore, the domain name “chinabloomberg.com” is confusingly similar to Complainant’s BLOOMBERG mark and name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to complainant’s CMGI mark); Cellular One Group, Inc. v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the domain name <cellularonechina.com> is confusingly similar to Complainant’s CELLULAR ONE mark).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i) to show that Complainant has rights in the mark contained within the domain name in issue and that the domain name is identical to or confusingly similar to Complainant’s mark.
Since registration
on August 16, 1999, Respondent has made no use of the domain name. Such passive holding may be viewed as
evidence of Respondent’s having no rights to or legitimate interests in the
mark contained within the domain name. See American Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name).
The Panel holds that Pursuant to Policy ¶ 4(c)(i), Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the domain name in connection with a bona fide offering of goods or services; (ii) Respondent is not and has not been commonly known by the domain name; and (iii) Respondent is not making legitimate noncommercial or fair use of the domain name, without intending to mislead and divert consumers or to tarnish Complainant’s BLOOMBERG mark for commercial gain.
The Panel finds
that Complainant met the burden of showing that Complainant has rights in the
mark contained within the domain name registered by Respondent and that
Respondent has no such rights to or legitimate interests in the domain name in
question. Policy ¶ 4(a)(ii).
Respondent registered but has not made any fair or non-commercial use of the domain name in issue in this case. Passive holding of a domain name containing the mark of another has been considered by several UDRP panels to be evidence of bad faith registration and use of a domain name. Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).
Here, Respondent
registered a domain name containing the well-known BLOOMBERG mark. The international scope of Complainant’s use
of the mark permits the inference that Respondent knew of Complainant’s mark
prior to registering the domain name in issue, especially since Respondent has
shown no association with the mark and Respondent is not commonly known by the
mark. Respondent did not register this domain name in good faith. Given the widespread use of the BLOOMBERG
mark, Respondent knew or should have known of Complainant’s rights in the mark
and this is evidence of bad faith. See E. & J. Gallo Winery v. Oak Inv.
Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1)
Respondent knew or should have known of the Complainant’s famous GALLO marks
and (2) Respondent made no use of the domain name “winegallo.com”).
In addition,
Respondent has not linked the domain name to an active website and Respondent
has not submitted any evidence of preparations to use the domain name in a fair
non-commercial manner. Respondent’s
passive holding of the domain name has continued now for almost two years. This also permits an inference of bad faith.
See Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the
Respondent’s failure to develop its website in a two year period raises the
inference of registration in bad faith).
Based on the above,
the Panel finds that Respondent registered and used the domain name in bad
faith. Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "chinabloomberg.com" be transferred from Respondent to Complainant.
Honorable Carolyn Marks Johnson (Ret), Panelist
Dated: July 9, 2001.
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