Bloomberg Finance L.P. v. Bernardo Figeroa
Claim Number: FA2212002025827
Complainant is Bloomberg Finance L.P. (“Complainant”), USA, represented by Madeline Kessler of Bloomberg L.P., USA. Respondent is Bernardo Figeroa (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crypto-bloomberg.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on December 29, 2022; Forum received payment on December 29, 2022.
On December 30, 2022, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <crypto-bloomberg.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 30, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2023 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@crypto-bloomberg.com. Also on December 30, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, Bloomberg Finance L.P., provides global financial news and analysis. Complainant has rights in the BLOOMBERG mark through trademark registrations with, for example, the Korean Intellectual Property Office (KIPO) (Reg. No. 0,049,368, which was registered on November 12, 1998). The disputed domain name is identical or confusingly similar to the BLOOMBERG mark because it merely adds the generic term “crypto” to Complainant’s BLOOMBERG mark, along with the “.com” generic top-level domain (“gTLD”) to form.
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s BLOOMBERG mark, nor is Respondent commonly known by the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services, as it resolves to an inactive site.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent had actual and/or constructive knowledge of Complainant’s rights in the BLOOMBERG mark and failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on June 3, 2022.
2. Complainant has established rights in the BLOOMBERG mark through trademark registrations with, for example, the KIPO (Reg. No. 0,049,368, which was registered on November 12, 1998).
3. The disputed domain name remains inactive.
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 right in the BLOOMBERG mark through trademark registrations, including with the KIPO (Reg. No. 0,049,368, which was registered on November 12, 1998). Registration of a mark with the KIPO is valid showing of rights in a mark under Policy ¶ 4(a)(i). See Chevron Intellectual Property LLC v. PAUL DAVID SONG, FA 1800906 (Forum Sep. 26, 2018) (“Registration of a mark with a national trademark agency such as the KIPO is sufficient to establish rights in that mark.”). Since Complainant provides evidence of registration of the BLOOMBERG mark with the KIPO, the Panel finds that Complainant has established rights in the BLOOMBERG mark per Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <crypto-bloomberg.com> is confusingly similar to its BLOOMBERG mark since it simply adds the generic term “crypto” and the “.com” gTLD. When a disputed domain name includes an entire mark, additional terms and gTLDs, it has been found insufficient to defeat a finding of confusing similarity. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BLOOMBERG mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the BLOOMBERG mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also 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 unmasked WHOIS information for disputed domain name lists the registrant as “Bernardo Figeroa.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the BLOOMBERG mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to make a bona fide offering of goods or services since the disputed domain name does not resolve to a functioning website. Previous panels have agreed, finding that when a respondent does not actively use a domain name there 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). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant provides a screenshot showing that the disputed domain name does not correspond to a functioning or active webpage. The Panel agrees and finds that Respondent lacks a bona fide offering of goods or services and a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name does not resolve to a functioning website. The Panel observes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.).
The particular circumstances of this case that the Panel has considered are:
i) As a result of Complainant’s substantial advertising and promotion of Complainant’s mark, Complainant’s mark has created significant goodwill and consumer recognition around the world. Since the inception of the business in 1981, and the adoption of the “Bloomberg” name in 1987, 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. There are currently over 320,000 Bloomberg Terminal subscribers worldwide. Complainant is headquartered in New York City, and employs 19,000 people in 176 locations around the world. As such, Complainant’s mark ‘BLOOMBERG’ is considered as being a well-known trademark; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name. Respondent did not respond to Complainant’s cease-and-desist letter.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant further contends that Respondent registered and uses the disputed domain name in bad faith because Respondent knew of Complainant’s rights in the BLOOMBERG mark when registering the domain name. UDRP precedent has declined to find bad faith on the basis of constructive knowledge. However, actual knowledge may be sufficient to show bad faith registration under Policy ¶ 4(b)(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.”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). To support its assertion Complainant points to the BLOOMBERG mark’s reputation, media presence, widespread recognition, and long and extensive use. The Panel infers, due to the notoriety of Complainant’s mark that Respondent had actual knowledge of Complainant’s rights at the time of registering the disputed domain name, which supports a finding of bad faith registration of the disputed domain name pursuant to 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 <crypto-bloomberg.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 24, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page