Bloomberg Finance L.P. v. Janice Reading
Claim Number: FA1909001864801
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Janice Reading (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blooornberg.net>, 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.
Bruce E. Meyerson 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 <blooornberg.net> 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 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@blooornberg.net. Also on October 2, 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 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant has become one of the largest providers of global financial news and data and related goods and services and is recognized and trusted worldwide as a 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”) (e.g., Reg. No. 2,736,744, registered July 15, 2003). Respondent’s <blooornberg.net> [i] domain name is confusingly similar to Complainant’s BLOOMBERG mark as Respondent intentionally misspells Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <blooornberg.net> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s BLOOMBERG mark and is not commonly known by the domain name.
3. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name points to a nonfunctioning website.
4. Respondent registered and uses the <blooornberg.net> domain name in bad faith. Respondent intends to trade off the goodwill of the Complainant’s mark and create a likelihood of confusion by implying an affiliation with Complainant.
5. Further, Respondent failed to reply to Complainant’s cease and desist letter.
6. Additionally, Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG marks given Complainant’s strong reputation and a high-profile presence in the financial and media sectors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BLOOMBERG mark. Respondent’s domain name is confusingly similar to Complainant’s BLOOMBERG mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <blooornberg.net> domain name and that Respondent registered and uses the 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 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 mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,736,744, registered July 15, 2003). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant’s registration of the BLOOMBERG mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <blooornberg.net> domain name is confusingly similar to the BLOOMBERG mark, as it intentionally misspells Complainant’s mark. Respondent further adds a “.net” generic top-level domain (“gTLD”). Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel holds that the <blooornberg.net> domain name is confusingly similar to the BLOOMBERG mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <blooornberg.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <blooornberg.net> domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the BLOOMBERG mark and is not commonly known by the <blooornberg.net> domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under 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, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. 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). The WHOIS information of record identifies Respondent as “Janice Reading” and there is no other evidence to suggest Respondent is authorized to use the BLOOMBERG mark. Thus, Respondent is not commonly known by the <blooornberg.net> domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent’s resolving website is inactive. Using a domain name incorporating the mark of another to host an inactive website is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complaiant has provided evidence that the resolving webpage displays the message “this site can’t be reached.” Accordingly, Respondent’s use of the <blooornberg.net> domain name fails to confer rights and legitimate interests for the purposes of Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <blooornberg.net> domain name in bad faith because Respondent attempts to create a likelihood of confusion by implying an affiliation with Respondent. Using a domain name incorporating the mark of another to trade upon the goodwill of a complainant’s mark shows bad faith under Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant provides a screenshot of the resolving webpage associated with the <blooornberg.net> domain name which displays the BLOOMBERG mark. Accordingly, the Panel holds that Respondent has attempted to benefit off Complainant’s mark in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <blooornberg.net> domain name with actual knowledge of Complainant’s rights in the BLOOMBERG mark. Registering a domain name incorporating the mark of another with knowledge of another’s rights therein shows bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Complainant contends that Respondent must have had actual knowledge of the BLOOMBERG mark and business due to Complainant’s strong reputation and high-profile presence in the financial and media sectors, and that Complainant is the subject of substantial consumer recognition and goodwill. The Panel agrees with Complainant and holds that Respondent did have actual knowledge of Complainant’s mark prior to registering the <blooornberg.net> domain name, thus demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <blooornberg.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 28, 2019
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