Bloomberg Finance L.P. v. Danny Wilkins
Claim Number: FA1909001864791
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Danny Wilkins (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergmediamexico.com>, registered with Google 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2019; the Forum received payment on September 30, 2019.
On October 1, 2019, Google LLC confirmed by e-mail to the Forum that the <bloombergmediamexico.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 October 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@bloombergmediamexico.com. Also on October 3, 2019, 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 October 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is one of the largest providers of global financial news and data and related goods and services. Complainant has rights in the BLOOMBERG trademark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered Jul. 15, 2003). Respondent’s <bloombergmediamexico.com> domain name is confusingly similar to Complainant’s BLOOMBERG trademark as it incorporates the trademark along with the terms “media” and “Mexico,” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bloombergmediamexico.com> domain name. Respondent is not licensed or permitted to use Complainant’s BLOOMBERG trademark 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’s disputed domain name resolves to an inactive webpage.
Respondent registered and uses the <bloombergmediamexico.com> domain name in bad faith. Respondent failed to respond to Complainant’s cease and desist letters. Furthermore, Respondent was aware of Complainant’s rights in the BLOOMBERG trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following national trademark registrations:
Chilean national Trademark Registrations:
No. 1035931 BLOOMBERG (word), registered August 26, 2013 for services in class 36:
No. 1226381 BLOOMBERG (word), registered January 16, 2017 for goods in classes 9 and 16; and
No. 1226380 BLOOMBERG (word), registered January 16, 2017 for services in classes 36, 38, 41.
Czech national Trademark Registrations:
No. 257639 BLOOMBERG (word), registered September 29, 2003 for services in class 35;
No. 216914 BLOOMBERG (word), registered April 23, 1999 for goods and services in classes 9, 16, 36, 38, 41 and 42.
South Korean national Registrations:
No. 113526 BLOOMBERG (word), registered March 7, 2005 for services in class 35;
No. 44948 BLOOMBERG (word), registered August 3, 1998 for services in class 38;
No. 44947 BLOOMBERG (word), registered August 3, 1998 for services in class 41,
No, 389613 BLOOMBERG (word), registered December 27, 1997 for goods in class 16;
No. 43099 BLOOMBERG (word), registered June 26, 1998 for services in class 38;
No. 389612 BLOOMBERG (word), registered January 5, 1998 for goods and service in classes 9 and 39;
No. 49368 BLOOMBERG (word), registered November 12, 1998 for services in classes 36 and 38; and
No. 54991 BLOOMBERG (word), registered May 17, 1999 for services in class 36.
The Complainant has also generally referred to a number of US national trademark registrations for BLOOMBERG.
The disputed domain name <bloombergmediamexico.com> was registered May 14, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the BLOOMBERG trademark based upon registration of the trademark with the USPTO, as well as in Chile, the Czech Republic (e.g., Reg. No. 257,639 registered Sept. 29, 2003) and Republic of Korea. South. Complainant has not provided any evidence / copies of Certificates of Registration for the US national registrations, only for the Chiilean, Czech and Korean registrations. Registration of a trademark with the Registro de Marcas Comerciales (Chile), the Industrial Property Office (Czech Republic), and/or the Korean Intellectual Property Office is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). The Panel therefore holds that Complainant’s registration of the BLOOMBERG trademark with the Registro de Marcas Comerciales (Chile), the Industrial Property Office (Czech Republic), and the Korean Intellectual Property Office is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <bloombergmediamexico.com> domain name is confusingly similar to the BLOOMBERG trademark, as the name incorporates the trademark along with the terms “media” and “Mexico” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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 General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). The Panel agrees with the Complainants conclusion, especially as the added terms “media” and “Mexico” merely can be seen as a reference tom the Complainant’s media services in or for Mexico. The Panel therefore determines that the <bloombergmediamexico.com> domain name is confusingly similar to the BLOOMBERG trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 argues that Respondent has no rights or legitimate interests in the <bloombergmediamexico.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BLOOMBERG trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Danny Wilkins,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <bloombergmediamexico.com> domain name.
Complainant also asserts that Respondent’s inactive holding of the <bloombergmediamexico.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage. The Panel therefore finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel notes that Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Complainant asserts that Respondent’s failure to use the <bloombergmediamexico.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). 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 Panel recalls Complainant’s contention that the domain name does not resolve to an active website. The Panel finds Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's BLOOMBERG trademark, Respondent was well aware of Complainant's rights in the trademark when it registered the disputed domain name. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name, based on the construction of the disputed domain name, and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the trademark and thus registered the name in bad 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 <bloombergmediamexico.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 2, 2019
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