Bloomberg Finance L.P. v. Syed J. Hussain / Domain Management
Claim Number: FA2303002038315
Complainant is Bloomberg Finance L.P. (“Complainant”), internally represented by Madeline Kessler of Bloomberg L.P., New York, USA. Respondent is Syed J. Hussain / Domain Management (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergpodcast.com> (the “disputed domain name”), registered with Sav.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on March 31, 2023; Forum received payment on March 31, 2023.
On March 31, 2023, Sav.com, LLC confirmed by e-mail to Forum that the <bloombergpodcast.com> disputed domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 April 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@bloombergpodcast.com. Also on April 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 April 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has become one of the largest providers of global financial news, 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 trademark and additional trademarks incorporating the BLOOMBERG trademark based on registration with the United States Patent and Trademark Office (“USPTO”), including, but not limited to: BLOOMBERG, United States Registration Nos. 2,736,744 and 3,430,969; and BLOOMBERG.COM, United States Registration No. 2,769,201. Moreover, a subsidiary of Complainant (Bloomberg Finance One L.P.) has obtained registrations for at least 45 additional trademarks with the USPTO containing the term “Bloomberg”. Moreover, Complainant owns trademark registrations in over 100 jurisdictions worldwide. Bloomberg L.P. currently uses the BLOOMBERG trademark and service mark under license from Bloomberg Finance L.P. and its affiliated companies.
Bloomberg is headquartered in New York City and employs approximately 19,000 people in 176 locations worldwide.
The aforementioned trademarks will hereinafter collectively be referred to as the “BLOOMBERG Mark”.
Complainant owns the domain names <bloomberg.com>, registered on September 29, 1993, and <bloomberg.net>, registered on March 8, 1997, and owns over 3,000 other domain names incorporating the term “Bloomberg”.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s BLOOMBERG Mark because the disputed domain name incorporates the Complainant’s trademark followed by the term “podcast”, and then followed by the generic Top Level Domain (“gTLD”) “.com”.
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name as 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, Complainant claims that Respondent is trading upon Complainant’s global reputation.
Finally, Complainant contends that Respondent registered and uses the <bloombergpodcast.com> disputed domain name in bad faith because Respondent did not reply to a cease-and-desist letter from Complainant and Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG Mark prior to registration of the disputed domain name.
The disputed domain name was registered on June 2, 2022. The disputed domain name resolves to a webpage that offers the domain name for sale. On October 5, 2022, Complainant sent a demand letter to the registrar’s email address listed on Respondent’s WHOIS information, but never received a reply from Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered trademark rights in the BLOOMBERG Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to Complainant’s BLOOMBERG Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that the disputed domain name is confusingly similar to the BLOOMBERG Mark as set forth below.
The Panel finds that Complainant has rights in the BLOOMBERG Mark per Policy paragraph 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No., 2,736,744) and through its registration of the mark with numerous trademark offices worldwide. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy paragraph 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). In addition, registration of a trademark with multiple trademark offices worldwide is also sufficient to establish rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
The Panel further finds that Respondent’s disputed domain name is confusingly similar to Complainant’s BLOOMBERG Mark as it consists of the entirety of Complainant’s trademark followed by the term “podcast”, and then followed by the gTLD “.com”. The addition of a term and a gTLD fail to distinguish a disputed domain name from a trademark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a term and gTLD; the differences between the domain name and its incorporated trademark are insufficient to differentiate one from the other for purposes of the Policy).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), and then the burden shifts to Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Here, the Panel holds that Complainant has made out a prima facie case.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name. Further, Complainant has not authorized, licensed or otherwise permitted Respondent to use the BLOOMBERG Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent registered and is using the disputed domain name in order 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 corresponding name in connection with a bona fide offer of goods or services. See Bloomberg L.P. v. Bloomberg Realty (India) Private Limited, FA1204001439263 (Forum May 30, 2012).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG Mark, and this constitutes bad faith under Policy paragraph 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its BLOOMBERG Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy paragraph 4 (a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it). Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as explained supra. Respondent has failed to make an active use of the resolving webpage and has offered the disputed domain name for sale.
Finally, the Panel finds that Respondent’s failure to respond to Complainant’s cease-and-desist letter demonstrates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(1). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failure to respond to a cease-and-desist demand letter constitutes bad faith).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by 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 <bloombergpodcast.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 10, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page