national arbitration forum

 

DECISION

 

Bloomberg Finance L.P. v. Oleg G. Verin

Claim Number: FA0901001240572

 

PARTIES

Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Genevieve Blake, of Willkie Farr & Gallagher LLP, New York, USA.  Respondent is Oleg G. Verin (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bloomberg-s.com>, registered with Ano Regional Network Information Center d/b/a Ru-Cen.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 5, 2009.  The Complaint was submitted in both Russian and English.

 

On January 3, 3009, Ano Regional Network Information Center d/b/a Ru-Cen confirmed by e-mail to the National Arbitration Forum that the <bloomberg-s.com> domain name is registered with Ano Regional Network Information Center d/b/a Ru-Cen and that Respondent is the current registrant of the name.  Ano Regional Network Information Center d/b/a Ru-Cen has verified that Respondent is bound by the Ano Regional Network Information Center d/b/a Ru-Cen 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 January 12, 2009, a Russian language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2009 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@bloomberg-s.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant holds registrations of the BLOOMBERG mark with many governmental authorities (including Reg. No. 2,736,744, issued July 15, 2003, by the United States Patent and Trademark Office (USPTO). 

 

Complainant uses the BLOOMBERG mark in connection with its business of offering financial news services worldwide.

 

Complainant has not granted Respondent a license to use its BLOOMBERG mark. 

 

Respondent registered the <bloomberg-s.com> domain name on November 13, 2007. 

 

The disputed domain name resolves to a website entitled “Bloomberg Strategies” and which purports to offer financial consulting services out of offices in New York, Moscow, London, Kiev, and Tel-Aviv. 

 

This website also displays an ®, a recognized symbol for registered trademarks, after the “Bloomberg Strategies” title.

Respondent’s <bloomberg-s.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.

 

Respondent does not have any rights to or legitimate interests in the <bloomberg-s.com> domain name.

 

Respondent registered and uses the <bloomberg-s.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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 to or legitimate interests in respect of the domain name; and

(3)   the domain name was registered and is being used by Respondent in bad faith.

 

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established its rights in the BLOOMBERG mark due to its USPTO and international trademark registrations.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a complainant had established rights in marks where the marks were registered with a trademark authority); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):

 

Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’).

 

The <bloomberg-s.com> domain name consists of Complainant’s entire BLOOMBERG mark, followed by a hyphen, the letter “s,” and the generic top-level domain (gTLD) “.com.”  The domain name is confusingly similar to the BLOOMBERG mark under Policy ¶ 4(a)(i) because these additions, whether taken singly or together, are sufficient to disguish the disputed domain name from the mark.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):

 

[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

See also, for example, Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):

 

[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).

 

Further see Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):

 

The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain name.  If  Complainant’s allegations establish such a prima facie case, the burden then shifts to Respondent to show that it does indeed have rights to or legitimate interests in the disputed domain name, whether pursuant to the guidelines in Policy ¶ 4(c) or otherwise. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.

 

Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights to or legitimate interests in the <bloomberg-s.com> domain name pursuant to Policy ¶ 4(a)(ii). And, because no response was submitted in this proceeding, we may presume that Respondent has no such rights or legitimate interests.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

 Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii). 

 

However, we will nonetheless examine the record, in consideration of the factors listed in Policy ¶ 4(c), to determine if there is any basis for concluding that Respondent has such rights or interests. 

 

We begin by observing that there is no evidence in the record to suggest that Respondent is commonly known by the <bloomberg-s.com> domain name.  Moreover, Complainant asserts, and Respondent does not deny, that it has not granted Respondent license to use its BLOOMBERG mark.  And we note that the pertinent WHOIS information lists Respondent as “Oleg G. Verin.”  Therefore, we conclude that Respondent has not established rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent haad no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).

 

Respondent may also prove it has rights or legitimate interests in the disputed domain name by showing that it is being used in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  The undisputed evidence in the record before us indicates that the domain name is being used to direct Internet users to a site called “Bloomberg Strategies” which claims to offer financial information and consulting services.  Respondent is thus using Complainant’s BLOOMBERG mark to directly compete with Complainant’s business.  This is not a use which establishes rights to or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):

 

Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”

 

Finally in this connection, we take note of Complainant’s allegation to the effect that the website resolving from the disputed domain name places a ® (for registered trademark) after the “Bloomberg Strategies” title.  This suggests that Respondent is attempting to pass itself off as Complainant.  Such a use of the contested domain does not establish that Respondent has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that where a respondent attempts to pass itself off as a complainant online, in a blatant unauthorized use of that complainant’s mark, that conduct is evidence that that respondent has no rights to or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007): “Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We have already concluded that Respondent is using the disputed domain name to divert Internet users who are seeking Complainant’s online presence to its own website.  Internet users may become confused as to Complainant’s possible sponsorship of or affiliation with the resulting website.  We infer from this that Respondent is attempting to profit from such confusion either by offering competing financial services or by passing itself off as Complainant.  This is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting from its misconduct).

 

Finally under this heading, Respondent’s attempt to use the contested domain name to pass itself off as Complainant also demonstrates bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding bad faith where a respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that a complainant endorsed and sponsored that respondent’s website).

 

For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <bloomberg-s.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  February 19, 2009

 

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