Bloomberg Finance L.P. v. preyash shah / N/A et al.
Claim Number: FA1808001802200
Complainant: Bloomberg Finance L.P. of New York, New York, United States of America.
Respondent: 2, Sundarvan Society of Mandvi, Unknown, India.
preyash shah / N/A of mandvi, Gujarat, IN.
REGISTRIES and REGISTRARS
Registries: INFIBEAM INCORPORATION LIMITED
Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com
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 Examiner in this proceeding.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: August 20, 2018
Commencement: August 21, 2018
Response Date: September 3, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant, Bloomberg Finance L.P., is a global financial services and software company established in the United States. The Complainant is one of the leading providers of financial software and analytics tools, and is the provider of several media and news outlets related to corporate and financial matters. The Complainant employs approximately 19,000 employees in 176 locations around the world.
The Complainant is the holder of inter alia the national United States word mark “BLOOMBERG” (Reg. No. 3,430,969).
Respondent registered the disputed domain name <bloomberg.ooo> on June 13, 2018. The disputed domain name is used to redirect to a standard parking page displaying sponsored links related to the Complainant and to financial or company news and markets.
In its Response, the Respondent contends that the Complainant cannot claim rights in the disputed domain name as the Complainant only produces proof of a trademark registration in the United States. According to the Respondent, such a national registration does not preclude the Respondent from registering the disputed domain name in India. The Respondent also claims that the website connected to the disputed domain name makes no reference to the Complainant or its business, thus preventing any finding of confusing similarity. Lastly, in accordance with the arguments mentioned above, the Respondent contends the Complaint was brought in an abuse of the URS process or contains material falsehoods.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended
1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
URS, paras. 1.2.6 and 8.1.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
The record makes clear that the Complainant “holds a valid national or regional registration and that [it] is in current use”. The Examiner finds that the second-level portion of the disputed domain name is identical to the Complainant’s registered BLOOMBERG trademark. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.OOO” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825).
Contrary to the arguments of the Respondent, it is not required that the Complainant produces proof of registration of a registered trade mark in the jurisdiction of the Respondent’s place of residence to seek relief through the URS process. It is sufficient for the Complainant to show that it holds a valid national or regional registration and that is in current use. The record shows that this is clearly the case.
As the registered domain name is identical to a word mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that the Complainant has satisfied the first element of the URS in accordance with paragraph 1.2.6.1 of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant has not authorized the Respondent to use its registered BLOOMBERG trademark. The Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in BLOOMBERG and the disputed domain name, or evidence about a fair use either. The use of a domain name to host a parked page comprising sponsored links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark. Contrary to the arguments of the Respondent, the sponsored links displayed on the website connected to the disputed domain name specifically refer to the Complainant and its business. Therefore, the Examiner finds that the second element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has also been proven.
[URS
1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of documented out-of pocket costs directly related to the domain name;
or
b. Registrant has registered the domain name in order to prevent the trademark
holder or service mark from reflecting the mark in a corresponding domain name,
provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web site or other on-line
location, by creating a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of Registrant’s web
site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
The passive holding of a domain name can constitute bad faith registration and use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. (See e.g., Telstra Corporation Limited, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Liu.Jo S.p.A. v. Martina Hamsikova, WIPO Case No. D2013-1261). In the present case, the Respondent is passively holding the disputed domain name as it resolves to a standard holding page displaying sponsored links related to the Complainant and its business. This indicates that the disputed domain name is used to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's BLOOMBERG trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Complainant is subsequently also prevented from reflecting its trademark in the corresponding disputed domain name.
It is inconceivable to the Examiner that the Respondent was unaware of the Complainant and its trademark rights when it registered the disputed domain name which is identical to the Complainant’s BLOOMBERG registered trademark. Given the well-known and non-descriptive character of the Complainant's BLOOMBERG trademark, the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name. Moreover, the Examiner finds that, given the distinctive character of the Complainant’s BLOOMBERG trademark, it is difficult to imagine any future good faith use of the disputed domain name by the Respondent. Therefore, the Examiner finds that the third element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.3 has been proven.
The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.
The Respondent contends that since the trademark registration produced by the Complainant is only valid in the United States, the current URS process is misleading and based on irrelevant documents.
Based on the findings above, the Examiner considers this argument to be unfounded.
The Examiner finds as follows:
1. The Complaint was neither abusive nor contained material falsehoods.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<bloomberg.ooo>
Flip Jan Claude Petillion, Examiner
Dated: September 04, 2018
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