DECISION
Bloomberg Finance L.P. v. Bloomberg News
Claim Number: FA2212002025934
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Laya Varanasi of Bloomberg L.P., New York, USA. Respondent is Bloomberg News (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergnewsnetwork.com>, registered with NameCheap, Inc.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on December 30, 2022; Forum received payment on December 30, 2022.
On December 30, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <bloombergnewsnetwork.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 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@bloombergnewsnetwork.com. Also on January 3, 2023, 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 26, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Hon. Karl V. Fink (Ret.) 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
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 asserts rights in the BLOOMBERG mark based upon registration with the National Institute of Industrial Property (“INAPI”) (e.g. Reg. No 1,035,931 registered August 26, 2013). The <bloombergnewsnetwork.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark because the disputed domain name fully incorporates the Complainant’s mark and adds only the terms “news” and “network”. The disputed domain name also includes the generic top level domain (“gTLD”) “.com”.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <bloombergnewsnetwork.com> domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Instead, Respondent is using the resolving webpage to host advertising links to third-party websites.
Respondent registered and uses the <bloombergnewsnetwork.com> domain name in bad faith. The Respondent failed to reply to a cease and desist letter. Additionally, Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <bloombergnewsnetwork.com> domain name.
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 asserts rights in the BLOOMBERG mark based upon registration with the INAPI (e.g. Reg. No 1,035,931 registered August 26, 2013) and other registrations of that mark. Complainant also has several registrations of the BLOOMBERG NEWS mark. Registration with trademark agencies is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the BLOOMBERG mark with the INAPI and other trademark agencies, and multiple registrations of the BLOOMBERG NEWS mark. The Panel finds that Complainant has rights in the BLOOMBERG mark and the BLOOMBERG NEWS mark per Policy ¶ 4(a)(i).
Complainant argues the <bloombergnewsnetwork.com> domain name is confusingly similar to Complainant’s BLOOMBERG marks. The addition of a generic word as well as the “.com” gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain name fully incorporates the Complainant’s marks and adds only the term “network” and the “.com” gTLD. The Panel finds that the <bloombergnewsnetwork.com> domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends Respondent is not commonly known by the <bloombergnewsnetwork.com> domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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). Even where WHOIS information indicates that a Respondent is commonly known by a disputed domain name, the Respondent still must provide affirmative evidence to demonstrate that it is truly known by the disputed domain name. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “Bloomberg News.” Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s BLOOMBERG mark, and that Respondent has provided no evidence outside of the WHOIS information to demonstrate that it is commonly known by the disputed domain name. The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the <bloombergnewsnetwork.com> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use. Respondent’s current and apparently only use of the disputed domain name is to provide advertising links to third-party websites. Use of a disputed domain name to feature third-party hyperlinks is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶¶ 4(c)(i) and (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides screenshot evidence of the resolving webpage being used to host pay-per-click third-party links. The Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends Respondent registered the <bloombergnewsnetwork.com> domain name in bad faith because Respondent failed to reply to a cease and desist letter. Failure to respond to a cease and desist letter is evidence of bad faith per Policy ¶ 4(a)(iii)). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides screenshot evidence of Complainant’s correspondence sent to Respondent. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <bloombergnewsnetwork.com> domain name with actual knowledge of Complainant’s rights in the BLOOMBERG marks. Actual knowledge is sufficient for a finding of bad faith per 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.”). Complainant contends Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG marks based on the Complainant’s strong reputation and high-profile presence in the financial and media sectors. Complainant further asserts it first used the BLOOMBERG mark in 1993, well before Respondent registered the disputed domain name on May 15, 2022. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the marks and registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <bloombergnewsnetwork.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
February 3, 2023
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