Bloomberg Finance L.P. v. Garry Porter / Upwork
Claim Number: FA2206002002666
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Madeline Kessler of Bloomberg L.P., New York, USA. Respondent is Garry Porter / Upwork (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergnewsagency.com>, registered with Porkbun LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2022. The Forum received payment on June 30, 2022.
On June 30, 2022, Porkbun LLC confirmed by e-mail to the Forum that the <bloombergnewsagency.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 July 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2022 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@bloombergnewsagency.com. Also on July 1, 2022, 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 July 25, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, Bloomberg Finance L.P., provides financial news, data and analytics. Complainant directly or through its subsidiary, Bloomberg Finance One L.P., has rights in the BLOOMBERG and BLOOMBERG NEWS marks based upon registrations with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies worldwide. Respondent’s <bloombergnewsagency.com> domain name is confusingly similar to Complainant’s marks.
Respondent does not have rights or legitimate interests in the <bloombergnewsagency.com> domain name. Respondent is not licensed or authorized to use Complainant’s BLOOMBERG or BLOOMBERG NEWS marks and is not commonly known by the domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, Respondent uses the domain name to direct users to a non-functioning website.
Respondent registered and uses the <bloombergnewsagency.com> domain name in bad faith with actual knowledge of Complainant’s rights in the BLOOMBERG NEWS mark. Respondent failed to respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the BLOOMBERG mark, registered inter alia in Chile (Reg. No. 1035931, registered August 26, 2013) and claims that, through its subsidiary, Bloomberg Finance One L.P., it has rights in the BLOOMBERG NEWS mark based upon registrations with the USPTO (e.g., Reg. No. 2,266,559, registered August 3, 1999) and other trademark agencies worldwide.
As shown in Complainant’s Exhibit A, US registration 2,266,559 was registered in the name of Bloomberg L.P. However, the Panel has ascertained, through a TESS search, that this mark has been assigned to Bloomberg Finance One L.P. Accordingly the Panel accepts that, through its subsidiary, Bloomberg Finance One L.P., Complainant has rights in the BLOOMBERG NEWS mark.
The Panel finds Respondent’s <bloombergnewsagency.com> domain name to be confusingly similar to Complainant’s marks because it contains the BLOOMBERG and BLOOMBERG NEWS marks in their entirety, merely adding the terms “news agency” or “agency”, which do nothing to distinguish the domain name from the marks, and the inconsequential generic top-level domain name (“gTLD”) “.com”, which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <bloombergnewsagency.com> domain name was registered on February 23, 2022, long after the registrations of the BLOOMBERG and BLOOMBERG NEWS marks and long after Complainant has shown that its BLOOMBERG mark had become one of the most well-known marks in the world. Currently the domain name is parked.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <bloombergnewsagency.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Section 3.3 of the WIPO Jurisprudential Overview 3.0 provides:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case Complainant’s BLOOMBERG mark is one of the most well-known marks in the world and Respondent’s <bloombergnewsagency.com> domain name is a blatant attempt to take advantage of the goodwill and reputation of Complainant’s BLOOMBERG and BLOOMBERG NEWS marks. Further, Respondent has failed to contest any of Complainant’s assertions and has not provided any evidence of actual or contemplated good-faith use. Respondent concealed its identity when registering the domain name and failed to respond to Complainant’s cease and desist letter. Finally, there is no plausible good faith use to which the domain name may be put.
Under these circumstances the Panel finds Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergnewsagency.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 26, 2022
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