Bloomberg Finance L.P. v. TOM Le Roux
Claim Number: FA1812001822520
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is TOM Le Roux (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sciencebloomberg.com>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 26, 2018; the Forum received payment on December 26, 2018.
On December 26, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <sciencebloomberg.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2019 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@sciencebloomberg.com. Also on December 27, 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 January 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is one of the largest providers of global financial news, data, and related goods and services and is recognized and trusted worldwide for this leading source of financial information and analysis.
Complainant has rights in the BLOOMBERG mark through its trademark registrations around the world, including the United States Patent and Trademark Office (“USPTO”) and various other trademark agencies.
Respondent’s <sciencebloomberg.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark as it adds the term “science” and a “.com” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <sciencebloomberg.com> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s BLOOMBERG mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to capitalize upon the global fame of the BLOOMBERG mark.
Respondent registered and is using the <sciencebloomberg.com> domain name in bad faith. Respondent failed to respond to Complainant’s cease and desist letters. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the BLOOMBERG mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns multiple national trademarks registration for its BLOOMBERG mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the BLOOMBERG mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name to exploit Complainant’s trademark without authorization to do so.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through its registration of such mark with various national trademark registries worldwide. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s at-issue domain name contains Complainant’s BLOOMBERG trademark prefixed with the generic term “science”, all followed by the top-level domain name “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <sciencebloomberg.com> domain name is confusingly similar to Complainant’s BLOOMBERG trademark under 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.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the <sciencebloomberg.com> domain name lists “TOM Le Roux” as its registrant. There is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain. Therefore, the Panel concludes that Respondent is not commonly known by the <sciencebloomberg.com> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
Additionally, Respondent holds the domain name to exploit Complainant’s mark. Using the confusingly similar <sciencebloomberg.com> domain name in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Showing bad faith registration and use of a domain name pursuant to Policy ¶ 4(a)(iii) does not require circumstances specifically enumerated under Policy ¶ 4(b). See The Toronto-Dominion Bank v. Paul Gabriel / Net, FA 1714326 (Forum Mar. 6, 2017) (“In this case Panel finds no compelling evidence for the application of any of the above-described [¶ 4(b) bad faith] scenarios. Nevertheless, the Panel finds registration in bad faith and use in bad faith as separate matters.”). Here, based on the notoriety of Complainant’s trademark it is inconceivable the Respondent could have registered the confusingly similar <sciencebloomberg.com> without having actual knowledge of the BLOOMBERG trademark. Further, by failing to respond to the Complaint or to Complainant’s pre-complaint demand letter Respondent admits by its silence Complainant’s contention that Respondent had actual knowledge of Complainant’s BLOOMBERG mark. Respondent’s prior knowledge of Complainant’s trademark is sufficient grounds for finding bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also, Northwest Airlines, Inc. v. Mario Koch, FA 95688, (Forum Oct. 27, 2000) ("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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sciencebloomberg.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 17, 2019
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