Bloomberg Finance L.P. v. عرفان فیروزی
Claim Number: FA1706001734791
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York, U.S.A. Respondent is عرفان فیروزی (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergfarsi.com>, registered with Realtime Register B.V..
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 6, 2017; the Forum received payment on June 6, 2017.
On June 07, 2017, Realtime Register B.V. confirmed by e-mail to the Forum that the <bloombergfarsi.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 June 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2017 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@bloombergfarsi.com. Also on June 7, 2017, 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 June 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information. ICANN Rule 3(b)(viii):
This Complaint is based upon the trademark and service mark BLOOMBERG, Chilean Regs. 785.615, 671.875 and 786.863; Czech Regs. 257639 and 216914;
and South Korean Regs. 0113526, 44948, 44947, 389613, 43099, 389612, 49368,
and 54991 ("Complainant's Marks").
1. Other BLOOMBERG Trademark Registrations
In addition, Bloomberg Finance One L.P., a wholly owned subsidiary of Complainant, has obtained registrations for at least thirty-two (32) additional trademarks and service marks containing the word BLOOMBERG in the United States including BLOOMBERG, U.S. Registrations 2736744, 3430969, and BLOOMBERG.COM, U.S. Registration 2769201. Complainant and its affiliated companies (collectively, "Bloomberg") have obtained registrations for marks and continually used marks containing the word BLOOMBERG in over one hundred countries (collectively, "Complainant's Family of Marks").
2. Bloomberg's Domain Names
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 18, 1997. <Bloomberg.com> has been in continuous use by Complainant and its predecessor in interest since its registration in 1993. In addition, Bloomberg owns over 1,000 other domain names incorporating the word "bloomberg," including many defensive registrations of marks spelling "bloomberg" incorrectly.
3. The "Bloomberg" Trade Name
Complainant is the owner and bona fide senior user of the "Bloomberg" trade name ("Complainant's Trade Name"). Complainant's corporate parent, Bloomberg L.P., a Delaware limited partnership, has been inbusiness continuously since 1981, and has operated under the "Bloomberg" name in the United States and around the world since at least as early as 1987. Bloomberg
L.P. currently uses the "Bloomberg" trade name under license from Complainant.
4. Consumer Recognition of Bloomberg
Complainant's substantial advertising and promotion of Complainant's Marks, Complainant's Family of Marks, Complainant's Trade Name and Complainant's Domain Names have created significant goodwill and consumer recognition around the world. Since the inception of the business in 1981, and the adoption of the "Bloomberg" name in 1987, Bloomberg has become one of the largest providers of global financial news and data and related goods and services and is recognized and trusted worldwide as a leading source of financial information and analysis. One of the many products and services offered by Bloomberg is the BLOOMBERG PROFESSIONAL SERVICE (the "BPS"), which provides access to news, analytics, communications, charts, liquidity, functionalities and trading services. There are currently over 300,000 BPS subscribers worldwide.
Bloomberg is headquartered in New York City, and employs 19,000 people in 192 offices around the world.
5. Respondent's Registration of BLOOMBERG Domain Names
Upon information and belief Respondent registered the domain <bloombergfarsi.com> (the "Domain Name") on September 8, 2016.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds, ICANN Rule 3(b)(ix):
[a.] Respondent's Domain Name is Confusingly Similar to Complainant's Marks. ICANN Rule 3(b)(ix)(l ); CANN Policy 4(a)(i).
1. Complainant's Marks are strong and have gained secondary meaning through their continued use in connection with Complainant's electronic trading, financial news, and information businesses. According to the April 2004 issue of Trademark World identifying BLOOMBERG as the 19th most well-known mark in the world. Due to the wide recognition accrued in Complainant's Marks as synonymous with high quality financial data, news and analysis, it is obvious that Respondent is attempting improperly to capitalize on this recognition and goodwill.
2. On its face, the Domain Name is confusingly similar to the BLOOMBERG mark. Respondent's Domain Name fully incorporates the BLOOMBERG mark and adds only the word "farsi" in a blatant attempt to garner the goodwill and recognition of the famous BLOOMBERG mark.
3. To support the assertion that Respondent's registered domain name is confusingly similar to Complainant's Marks and Domain Names, Complainant respectfully submits as hyperlinks the following decisions:
a. Bloomberg L.P. v. Virtuality a/k/a Now Corp a/k/a rahndo, NAF Decision 97095, http://domains.adrforum.com/ domains/decisions/9709 5.htm (finding the domain name <bloombergnow.com> confusingly similar to complainant's trademark BLOOMBERG, because the addition of the generic word "now" "do[es] not add any distinguishing features to the mark, and does not render the mark any less recognizable");
b. Bloomberg L.P. v. Kevin Scharf, NAF Decision 96264, http://domains.adrforum.com/ domains/decisions/96264.htm (finding the domain name <bloombergchannel.com> confusingly similar to complainant's trademark BLOOMBERG, because "the addition of the generic word 'channel' does not negate the confusing similarity"); and
c. Bloomberg L.P. v. Eructer Joseth, NAF Decision 214417, http://domains.adrforum.com/domains/decisions/214417 .htm (finding the domain name <bloombergtrust.com> confusingly similar to complainant's BLOOMBERG mark, because "the disputed domain name appropriates the entire mark and merely adds the generic or descriptive term 'trust' at the end of Complainant's mark. The addition of the generic or descriptive term 'trust' fails to sufficiently differentiate the domain name from the mark with regard to Policy 4(a)(i)").
4. Complainant asserts that it is likely that an Internet user would mistakenly believe the website accessible by the URL <bloombergfarsi.com> is affiliated with Complainant. Currently the Domain Name points to a non-functioning website. A screenshot of <bloombergfarsi.com> is attached as Exhibit G.
[b] Respondent Has No Right or Legitimate Interest in the Domain Name
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
1. Complainant has not licensed or otherwise permitted Respondent to use Complainant's Marks or any of Complainant's Family of Marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
2. On September 12, 2016, Complainant sent a demand letter to the email address listed on Respondent's WHOIS information. The Respondent never replied to this letter.
3. There is no evidence to suggest that the Respondent currently listed on the WHOIS record is commonly known by the Bloomberg name. As a result, Respondent lacks a basis to rebut Complainant's Policy ¶4(a)(ii) claim. See Tercent` Inc. v. Lee Yi,NFA Decision 139720, http://www.adrforum.com/domains/decisions/139720.htm
(stating that "nothing in Respondent's WHOIS information implies that Respondent is 'commonly known by' the disputed domain name").
4. Moreover, since the Domain Name does not point to any functioning website, Respondent cannot claim a right or legitimate interest in the Domain Name based on the notion it has used the Domain Name or a corresponding name in connection with a bonafide offer of goods or services. Greenigans Lawn Care Inc. v. AAA Graphics, WIPO Decision D2004-0247,
http://www.wipo.int/amc/en/ domains/decisions/html/2004/ d2004-024 7.html.
5. Additionally, Complainant avers that Respondent has no legitimate interest and no basis to claim non-commercial fair use of Complainant's BLOOMBERG mark. Complainant concludes from the above circumstances that Respondent never intended to provide a legitimate, non-commercial fair use of the disputed domain name.
[c.] Respondent Registered and Used The Domain Name in Bad Faith.
ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
1. Complainant has a strong reputation and a high-profile presence in the financial and media sectors, and is the subject of substantial consumer recognition and goodwill. The <bloomberg.com> domain name was registered by Bloomberg on September 29, 1993 and has been in continuous use since 1993. Such facts and Respondent's use of the BLOOMBERG mark lead inescapably to the conclusion that Respondent was aware of Complainant's Marks before registering the Domain Name. Indeed, arbitrators have routinely found bad faith in circumstances where it is unlikely the registrant would have selected a domain name without knowing the reputation of the well-known trademark in question. See Northwest Airlines, Inc. v. Mario Koch, NAF Decision 95688, http://www.adrforum.com/domains/decisions/95688.htm
("The selection of a domain name which entirely incorporates the name of the world's fourth largest airline could not have been done in good faith"). See also Samsonite Corp. v. Colony Holding, NAF Decision 94313, http://domains.adrforum.com/domains/decisions/94313.htm (evidence of bad faith includes constructive knowledge of a commonly known mark at the time of registration).
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Respondent sent two emails (neither of which constituted a response). The first email said:
Hello, I am Erfan from iran,
I was told that you filed a Complaint against me for using a Domain that has the word "bloomberg" in share with your company brand.
FYI I should say that I am ready to cooperate with you by deleting the aforesaid Domain.
But I have a request and that's a delay for 40 days to leave the Domain.
please note me if you have any Idea about this. I am completely open to your point of view.
sincerely yours,
The second email said:
Hello
You noted that I should fill a formal response. please send me an example of that kind of response. After all I have deleted the DOMAIN and respectfully I do not think there is any necessity for further dispute over this case.
yours sincerely
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 undisputed representations pursuant to paragraphs 5(f), 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 (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 claims rights in the BLOOMBERG mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,736,744, registered July 15, 2003). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established rights in the BLOOMBERG mark.
Complainant claims Respondent’s <bloombergfarsi.com> is confusingly similar to Complainant’s BLOOMBERG mark because the domain name fully incorporates the mark and merely adds the descriptive term “farsi” as well as the generic top-level-domain “.com.” The addition of a descriptive term is not sufficient to prevent a finding of confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Respondent’s domain name is confusingly similar to Complainant’s BLOOMBERG mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by <bloombergfarsi.com> nor has Complainant authorized Respondent to use its BLOOMBERG mark. Where there is no formal response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “عرفان فیروزی” as the registrant name. There is no evidence in the record showing Complainant authorized Respondent to use the BLOOMBERG mark. Respondent has claimed no rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(a)(ii). Respondent has failed to make an active use of the disputed domain name. Failure to make an active use of a domain name generally demonstrates a respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). The <bloombergfarsi.com> domain name resolves to a website that shows the message “This page can’t be displayed.” There is no evidence the domain name was used in any other manner (such as an email server or an ecommerce backend). Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant fails to present any specific Policy ¶4(b) arguments; however, the non-exclusive nature of Policy ¶4(a)(iii) allows the Panel to look to the totality of circumstances in determining bad faith registration and use. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant claims Respondent had actual notice of Complainant’s rights in the mark because it is famous. Arguably therefore, Respondent registered and used the disputed domain name in bad faith. The notoriety of a mark and the business associated with that mark can be extensive enough to allow the inference a respondent had actual notice of a complainant’s rights prior to registration of a disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant has 325,000 subscriptions globally and 19,000 employees in 192 locations around the world. Apparently, Trademark World believes Complainant has the 19th most recognized trademark on the planet. That would seem to constitute sufficient evidence Complainant’s mark is well-known. Respondent registered and uses the disputed domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bloombergfarsi.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 10, 2017
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