Bloomberg Finance L.P. v. Scott Thomas
Claim Number: FA1803001774188
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Scott Thomas (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergcapitals.com> (the Domain Name), registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2018; the Forum received payment on March 1, 2018.
On March 1, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <bloombergcapitals.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@bloombergcapitals.com. Also on March 2, 2018, 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 March 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
Complainant’s contentions can be summarised as follows:
Complainant and its wholly owned subsidiary owns the trade mark BLOOMBERG, registered inter alia in the USA for its services. It has owned bloomberg.com since 1993. Complainant’s parent company has used the mark since at least 1987, now under licence from Complainant.
The Domain Name, registered in 2017, is confusingly similar to Complainant’s BLOOMBERG mark. Although the site is now non-functioning, it had previously pointed to a financial investment site purporting to specialize in bitcoin or cryptocurrency, a topic that Complainant or its group companies have reported on extensively and so Internet users could easily believe the site was associated with Complainant.
Respondent is not commonly known by the Domain Name. Complainant has not licensed Respondent to use Complainant’s BLOOMBERG mark. Upon receipt of a cease and desist letter from Complainant, Respondent removed the content attached to the Domain Name and agreed to transfer the Domain Name to Complainant but did not do so. This trading on Complainant’s reputation was commercial and cannot be legitimate non commercial fair use or a bona fide offering of goods and services. The agreement to remove the material shows a lack of a legitimate interest.
The Domain Name was registered and used in bad faith. Respondent must have known of Complainant’s reputation. The web site displayed non-working email addresses and telephone numbers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and its wholly owned subsidiary owns the trade mark BLOOMBERG, registered inter alia in the USA for its services. It has owned bloomberg.com since 1993.
The Domain Name registered in 2017 was used for a non working site related to cryptocurrency and is currently inactive.
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 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s BLOOMBERG mark (registered, inter alia, in the USA for its services), the generic term ‘capitals’ related to finance a field in which Complainant operates and the gTLD .com.Complainant has owned Bloomberg.com since 1993.
The addition of the generic word ‘capitals’ does not serve to distinguish the Domain Name from the BLOOMBERG mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i). ) Indeed it is likely to increase confusion as Complainant operates in the financial area.
The gTLD .com does not serve to distinguish the Domain Name from the BLOOMBERG mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and removed its non-working web site from the Domain Name after receiving a cease and desist from Complainant. As such, there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name.
There has been no trading use of the mark. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing Complainant’s mark. The use of the term ‘capitals’ in the Domain Name and the suggested intended use relating to currency makes it more likely than not that Respondent was aware of Complainant and its business at the time of registration of the Domain Name. BLOOMBERG is distinctive and not a descriptive term.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergcapitals.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 27, 2018
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