Bloomberg Finance L.P. v. shoukat ali / global news
Claim Number: FA2103001939889
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Melonie Callender of Bloomberg L.P., New York, USA. Respondent is shoukat ali / global news (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebloombergnews.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2021; the Forum received payment on March 31, 2021.
On April 1, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <thebloombergnews.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2021 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@thebloombergnews.com. Also on April 2, 2021, 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 April 27,2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BLOOMBERG trademark and service mark acquired through its ownership of the portfolio of trademark registrations described below and goodwill that it has acquired by the extensive use of the mark by itself and its associated companies in its global media business continuously since 1981 in the United States and globally since 1987. With headquarters in New York City, Complainant currently has over 320,000 subscribers worldwide and employing 19,000 people in 176 locations around the world.
Complainant submits that the disputed domain name is confusingly similar to its BLOOMBERG mark, as it fully incorporates the mark adding only the words “the” and “news”, and adds that the registration is a blatant attempt to garner the goodwill and recognition of its famous mark. Complainant further submits that this is even more true considering that Complainant’s associated company owns the registered trademark BLOOMBERG NEWS.
Complainant contends that given the close similarity between Complainant’s mark and the disputed domain name it is likely that an Internet user would mistakenly believe that the website to which the disputed domain name resolves, accessible by the URL <thebloombergnews.com>, is affiliated with Complainant. Citing Bloomberg Finance L.P. v. Protection of Private Person, Forum Case Number FA1712001763459, (determining that <bloombergcrypto.com> was confusingly similar to the BLOOMBERG mark and that adding the descriptive term “crypto” did not dispel confusion).
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence to suggest that Respondent, currently listed as the registrant on the WHOIS record is commonly known by the BLOOMBERG name. As a result, Respondent lacks a basis to rebut Complainant’s Policy ¶ 4(a)(ii) claim. Citing Bloomberg Finance L.P. v. Esmeralda Ortega, Forum Case Number FA1706001734794, (finding “that there is no evidence in the record to find that Respondent is commonly known by the disputed domain names”).
Complainant asserts that it has not licensed or otherwise permitted Respondent to use Complainant’s BLOOMBERG mark or any of Complainant’s family of marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
Respondent registered and is using the disputed domain name to trade upon Complainant’s global reputation. As a result, Respondent cannot claim a right or legitimate interest in the disputed domain name based on the notion that it has used the disputed domain name or a corresponding name in connection with a bona fide offer of goods or services. See Bloomberg L.P. v. Bloomberg Realty (India) Private Limited, Forum Case Number FA1204001439263, (“Use of a domain name which intentionally trade on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”).
Complainant adds that Respondent has no legitimate interest and no basis to claim non-commercial fair use of Complainant’s BLOOMBERG mark and concludes that the above-described circumstances show that Respondent never intended to provide a legitimate, non-commercial fair use of the disputed domain name.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith. Complainant argues that because it has a strong reputation and a high-profile presence in the financial and media sectors with a high level of consumer recognition it is implausible that the registrant of the disputed domain name would have been unaware of Complainant and its BLOOMBERG mark when the disputed domain name was registered. Citing See Bloomberg Finance L.P. v. Bloomberg Investments, Forum Case Number FA1603001665140, (“Given the notoriety of Complainant’s mark and the use given the disputed domain name by Respondent, the Panel agrees with Complainant relative to Respondent's actual knowledge, and finds that Respondent registered the domain name in bad faith”).
Complainant refers to a screen-capture of the website to which the disputed domain name resolves which presents competing news content prominently featuring the BLOOMBERG trademark in an obvious attempt to confuse Internet users and argues that it is the intent of Respondent to confuse and deceive Internet users who would mistakenly believe the website accessible by the URL <thebloombergnews.com> is affiliated with Complainant. Complainant argues that such use constitutes bad faith use under the Policy.
Complainant refers to a copy of a cease and desist letter sent to Respondent by its representative, to which there has been no response and argues that “Respondent’s failure to respond to the Complainant’s cease and desist letter supports a finding of bad faith, (especially where, as in this case the trademark in question has substantial goodwill and reputation)” as held in TDS Telecommunications Corporation v. Registrant Nevis Domains and Registrant Moniker Privacy Services, WIPO case no. D2006-162.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial news, data and related goods and services carrying on global business using the BLOOMBERG trademark and service mark of which it holds a portfolio of registrations including the following for which it has provided evidence of ownership:
· Chilean Trademark BLOOMBERG registration number 1035931, registered on August 26, 2013 for services in class 35;
· Chilean Trademark BLOOMBERG registration number 1226380, registered on January 16, 2017 for services in classes 36, 38 and 41;
· Chilean Trademark BLOOMBERG registration number 1226381 registered on January 16, 2017 for goods in classes 9 and 16;
· Czech Republic Trademark BLOOMBERG registration number 257639 registered on September 29, 2003 services in class 35.
· Complainant’s associated company Bloomberg L.P. is the owner of a portfolio of trademarks including the following United States registrations for the trademark BLOOMBERG NEWS:
· United States service mark registration number 2,266,559, registered on the Principal Register on August 3, 1999 for services in international classes 36, 41 and 42.
Complainant and its associated companies have a substantial Internet presence with a large portfolio of domain names and associated websites including the domain names <bloomberg.com> registered September 29, 1993, and <bloomberg.net>, registered March 8, 1997, used by Complainant as the addresses of its principal websites.
The disputed domain name <thebloombergnews.com> was registered on July 6, 2020 and is being used as the address of a website providing news content. The Registrar’s WhoIs identifies Respondent as the registrant.
The only information available about Respondent, is that which is provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request from the Forum for verification of the registration details of the disputed domain name confirmed that Respondent is the Registrant.
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 is provided clear, convincing, and uncontested evidence of it rights in the BLOOMBERG trademark and service mark acquired through its ownership of the portfolio of trademark registrations described above and the extensive goodwill that it has established by extensive and continuous use of the mark by itself and its associated companies in its global media business since 1981 growing to have over 320,000 subscribers worldwide and employing 19,000 people in 176 locations around the world.
The disputed domain name consists of Complainant’s BLOOMBERG mark in its entirety, the elements “the” and “news” and the in generic Top-Level Domain (“gTLD”) <.com>.
Complainant’s BLOOMBERG mark is the dominant and only distinctive element in the disputed domain name. The element “the” is merely the definite article, the element “news” is generic and descriptive and in the circumstances of this case the gTLD extension would be regarded as a necessary technical element for the domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the BLOOMBERG mark in which Complainant has rights. Complainant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that:
· there is no evidence to suggest that the Respondent being the registrant currently listed on the WHOIS record is commonly known by the Bloomberg name;
· Complainant has not licensed or otherwise permitted Respondent to use Complainant’s BLOOMBERG mark or any of Complainant’s family of marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks;
· a screen capture of the website to which the disputed domain name resolves which has been submitted the Panel in an annex to the Complaint, shows that Respondent is using the disputed domain name as the address of a website that prominently displays Complainant’s BLOOMBERG mark, offering news content in competition with Complainant;
· such use is neither a bona fide offer of goods or services or legitimate non-commercial use of the disputed domain name.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name At issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge that burden. Therefore this Panel must find that, on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore satisfied the second element in the test in Policy ¶ 4(a)(ii) also.
Complainant has built a strong reputation and has established a high-profile presence in the financial and media sectors with a high level of consumer recognition of its BLOOMBERG mark. Given the distinctive character of the BLOOMBERG mark and that the disputed domain name consists of Complainant’s mark in combination with the element “news” which clearly references Complainant’s business and goodwill, it is implausible that the registrant of the disputed domain name was unaware of Complainant and its business when the disputed domain name was registered.
This panel finds that, on the balance of probabilities, the disputed domain name was registered in bad faith in order to take predatory advantage of the goodwill and reputation of Complainant and its BLOOMBERG mark.
The a screen-capture of the website to which the disputed domain name resolves shows that the disputed domain name is being used in bad faith to present competing news content, prominently featuring the BLOOMBERG trademark in an obvious and intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this Panel is found that the disputed domain name was registered and used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thebloombergnews.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 28, 2021
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