Bloomberg Finance L.P. v. Janardhan Reddy / eMarket Web Technologies Pvt. Ltd
Claim Number: FA1508001632411
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Janardhan Reddy / eMarket Web Technologies Pvt. Ltd (“Respondent”), India.
REGISTRAR AND <BLOOMBERGADVISORY.COM> DOMAIN NAME
The domain name at issue is <bloombergadvisory.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2015; the Forum received payment on August 7, 2015.
On August 7, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloombergadvisory.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bloombergadvisory.com. Also on August 10, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the BLOOMBERG mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003).
2. Complainant is one of the largest providers of global financial news and data, and uses the BLOOMBERG mark to identify those goods and services.
3. The <bloombergadvisory.com> domain name is confusingly similar to the BLOOMBERG mark. The domain name contains Complainant’s mark in full, adds the generic term “advisory,” and inserts the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <bloombergadvisory.com> domain name. Respondent is not commonly known by the <bloombergadvisory.com> domain name, as demonstrated by the WHOIS record for the <bloombergadvisory.com> domain name. Further, Complainant has not licensed or otherwise permitted Respondent to use the BLOOMBERG trademark, nor use the mark as a domain name.
5. There is no evidence to suggest that Respondent has used the <bloombergadvisory.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <bloombergadvisory.com> domain name currently points to a website based out of India offering portfolio management services.
6. Respondent has engaged in bad faith registration and use of the <bloombergadvisory.com> domain name. Respondent was aware of Complainant’s mark before registering the <bloombergadvisory.com> domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
7. The <bloombergadvisory.com> domain name was registered July 4, 2015.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BLOOMBERG mark. Respondent’s domain name is confusingly similar to Complainant’s BLOOMBERG mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bloombergadvisory.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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."
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 or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's un<bloombergadvisory.com> 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 the 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.”).
Complainant argues that the <bloombergadvisory.com> domain name is confusingly similar to the BLOOMBERG mark. The domain name contains Complainant’s mark in full, adds the generic term “advisory,” and inserts the gTLD “.com.” The addition of a generic term and the addition of the “.com” gTLD are insufficient modifications to eliminate confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). As such, the Panel finds that the <bloombergadvisory.com> domain name is confusingly similar to the BLOOMBERG mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent has no rights or legitimate interests in the <bloombergadvisory.com> domain name. According to Complainant, Respondent is not commonly known by the <bloombergadvisory.com> domain name, as demonstrated by the WHOIS record for the <bloombergadvisory.com> domain name. The WHOIS information for the <bloombergadvisory.com> domain name lists “Janardhan Reddy / eMarket Web Technologies” as the registrant of record. Further, Complainant claims that it has not licensed or otherwise permitted Respondent to use the BLOOMBERG trademark, nor use the mark as a domain name. Given these contentions, along with Respondent’s failure to respond in this matter, the Panel finds that Complainant’s statements are sufficient to demonstrate that Respondent is not commonly known by the <bloombergadvisory.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant asserts that there is no evidence to suggest that Respondent has used the <bloombergadvisory.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent’s disputed domain name currently points to a website based out of India offering portfolio management services. A respondent lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use where a confusingly similar domain name is used to offer services that compete with a complainant who has rights in a mark. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent lacks a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has engaged in bad faith registration and use of the <bloombergadvisory.com> domain name. Complainant claims that Respondent was aware of Complainant’s mark before registering the <bloombergadvisory.com> domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant contends that it has a strong reputation and a high-profile presence in the financial media sectors and is the subject of substantial consumer recognition and goodwill. Further, the BLOOMBERG mark has been in use since 1993. The Panel agrees with Complainant that it is apparent that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergadvisory.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 8, 2015
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