Bloomberg Finance L.P. v. Protection of Private Person
Claim Number: FA1712001763459
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Protection of Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergcrypto.com>, registered with Registrar of Domain Names REG.RU 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2017; the Forum received payment on December 18, 2017. The Complaint was received in both Russian and English.
On December 20, 2017, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <bloombergcrypto.com> domain name(s) is/are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 January 2, 2018, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of January 22, 2018 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@bloombergcrypto.com. Also on January 2, 2018, the Russian language 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 January 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On February 6, 2018, the Panel issued a Procedural Order requesting the Complainant to submit its arguments as to how Respondent uses the domain name in bad faith setting a deadline of February 19, 2018.
On February 8, 2018, the Complainant submitted a timely Additional Submission in response to the Panel’s Order.
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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. 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 should be conducted in English.
A. Complainant
i) Complainant is a large financial corporation that conducts business all around the world. Complainant has been using the BLOOMBERG mark in connection with a wide range of financial services, including electronic trading, financial news, and information businesses. Complainant registered the BLOOMBERG mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,736,744, registered July 15, 2003). Respondent’s <bloombergcrypto.com> domain name is confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds the descriptive term “crypto.”
ii) Respondent has no rights or legitimate interests in the <bloombergcrypto.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent originally registered the domain name to display Complainant’s content, and has since removed all content entirely. Further, Respondent failed to respond to the cease and desist letter which Complainant sent to Respondent.
iii) Respondent registered and uses the <bloombergcrypto.com> domain name in bad faith. Respondent clearly had knowledge of Complainant’s rights in the BLOOMBERG mark prior to registering the domain name based on Complainant’s strong reputation and high-profile presence in the financial and media sectors. Additionally, Respondent failed to respond to Complainant’s cease and desist letter.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <bloombergcrypto.com> domain name on October 5, 2017.
C. Complainant’s Additional Submission in response to the Panel’s Order
There are specifically three bases on which the Panel should find bad faith in this instance:
i) 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 disputed domain Name;
ii) “Respondent’s failure to respond to the Complainants’ cease and desist letter supports a finding of bad faith, (especially where, as in this case the trademark in question has substantial goodwill and reputation).” Here, Respondent failed to respond to Complainant’s repeated notices, reflecting its bad faith intent to own the domain; and
iii) Respondent displayed a verbatim copy of Complainant’s Bloomberg news article (featuring, among other things, Complainant’s mark) on Respondent’s website. Respondent’s display of this obviously infringing item further demonstrates Respondent’s bad faith in registering a domain that includes Complainant’s mark.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 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 to have registered the BLOOMBERG mark with the USPTO (e.g. Reg. No. 2,736,744, registered July 15, 2003). See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, the Panel finds that Complainant has established rights in the BLOOMBERG mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <bloombergcrypto.com> domain name is confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds the descriptive term “crypto.” The Panel also notes that the domain name appends a generic top-level domain (“gTLD”). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <bloombergcrypto.com> domain name is confusingly similar to the BLOOMBERG mark under Policy ¶4(a)(i).
Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <bloombergcrypto.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Protection of Private Person” as the registrant. See Compl. Ex. E. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BLOOMBERG mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <bloombergcrypto.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant avers that Respondent fails to use the <bloombergcrypto.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant alleges that Respondent originally registered the domain name to display Complainant’s content, and has since removed all content entirely. Using a domain name to pass off as a complainant and failing to make an active use of a domain name generally fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (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).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of Respondent’s initial webpage, which displays a news article titled “Bitcoin Is Likely to Split Again in November, Say Major Players,” and states “©2017 Bloomberg L.P. All Rights Reserved” at the bottom of the article. See Compl. Ex. G. Complainant does not provide a screenshot of the alleged current inactive webpage. The Panel agrees that Respondent attempts to pass off as Complainant, failing to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG mark at the time of registering the <bloombergcrypto.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent clearly had knowledge of Complainant’s rights in the BLOOMBERG mark prior to registering the domain name based on Complainant’s strong reputation and high-profile presence in the financial and media sectors. As the Panel agrees that Respondent did have actual knowledge of Complainant’s mark, the Panel holds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that as identified by Exhibits G&H to the Complaint, Respondent displayed a verbatim copy of Complainant’s Bloomberg news article (featuring, among other things, Complainant’s mark) on Respondent’s website. Respondent’s display of this obviously infringing item further demonstrates Respondent’s bad faith in registering a domain that includes Complainant’s mark. The Panel agrees that Respondent displayed a verbatim copy of Complainant’s Bloomberg news article (featuring, among other things, Complainant’s mark) which is considered as being an infringing item on Respondent’s website. The Panel is of the view that it constitutes bad faith use under Policy ¶ 4(a)(iii).
As such, the Panel concludes that Respondent registered and used the disputed domain name in bad faith under 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 <bloombergcrypto.com> domain name be TRANSFERRED to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 22, 2018
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