DECISION

 

Bloomberg Finance L.P. v. julio torres / all investment holdings

Claim Number: FA2503002147804

 

PARTIES

Complainant is Bloomberg Finance L.P. ("Complainant"), represented by Madeline Kessler of Bloomberg L.P., New York, USA. Respondent is julio torres / all investment holdings ("Respondent"), Puerto Rico.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bloombergpuertorico.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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 31, 2025; Forum received payment on March 31, 2025.

 

On March 31, 2025, Porkbun LLC confirmed by e-mail to Forum that the <bloombergpuertorico.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 April 1, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2025 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@bloombergpuertorico.com. Also on April 1, 2025, 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 22, 2025, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant Bloomberg Finance L.P. engages in the provision of financial news and analytical services on a global scale. Complainant holds rights in the BLOOMBERG mark by virtue of numerous trademark registrations worldwide, including the registration with the Korean Intellectual Property Office (KIPO) (Reg. No. 0,049,368, registered November 12, 1998). Through extensive advertising and promotional efforts, Complainant has developed considerable goodwill and brand recognition across jurisdictions. The disputed domain name is confusingly similar to the BLOOMBERG mark in that it wholly incorporates the mark and merely appends the geographic term "puerto rico."

 

ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has neither been authorized nor licensed to use Complainant's BLOOMBERG mark, and is not commonly known by the disputed domain name. Furthermore, Respondent has not made use of the disputed domain name in connection with any bona fide offering of goods or services, as the domain currently resolves to an inactive website.

 

iii) Respondent registered and is using the disputed domain name in bad faith. At the time of registration and use, Respondent had actual and/or constructive knowledge of Complainant's rights in the BLOOMBERG mark, and failed to respond to a cease-and-desist letter issued by Complainant.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on August 31, 2024.

 

2. Complainant has established rights in the BLOOMBERG mark by means of trademark registrations in multiple jurisdictions, including the registration with the KIPO (Reg. No. 0,049,368, registered November 12, 1998).

 

3. The disputed domain name currently resolves to an inactive website.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the BLOOMBERG mark through trademark registrations, including with KIPO (Reg. No. 0,049,368, registered November 12, 1998). Registration of a mark with national trademark authorities constitutes a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has submitted evidence of its registration of the BLOOMBERG mark with 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 <bloombergpuertorico.com> is confusingly similar to the BLOOMBERG mark, as it fully incorporates the mark and merely adds the geographic term "puerto rico." It is well established that when a domain name incorporates a trademark in its entirety, the addition of generic terms or a gTLD does not negate 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 recognizable 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).

 

Rights or Legitimate Interests

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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "julio torres / all investment holdings" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent fails to make a bona fide offering of goods or services, as the disputed domain name does not resolve to a functioning website. Prior panels have consistently held that passive holding of a domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it qualify as 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 has submitted a screenshot demonstrating that the disputed domain name does not resolve to an active or functioning webpage. The Panel concurs and finds that Respondent has failed to establish a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel thus finds that Complainant has established a prima facie case based on the foregoing considerations. All relevant factors support a finding that Complainant has met its burden under the prima facie standard. As Respondent has neither submitted a Response nor made any attempt to rebut the prima facie case, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

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 preclude a finding of bad faith use under 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 taken into account include:

 

i) As a result of Complainant's substantial advertising and promotional activities, Complainant's mark has acquired significant goodwill and consumer recognition globally. Since the company's founding in 1981 and the adoption of the BLOOMBERG name in 1987, Complainant has become one of the largest providers of international financial news, data, and related services. BLOOMBERG is now a globally recognized and trusted source of financial information and analysis, with more than 350,000 Bloomberg Terminal subscribers worldwide. Complainant is headquartered in New York City and operates with a workforce of 21,000 employees across 159 locations. Accordingly, BLOOMBERG is considered a well-known trademark; and

 

ii) Respondent has submitted no evidence of any actual or contemplated good faith use of the disputed domain name; and

 

iii) Respondent failed to respond to Complainant's cease-and-desist letter.

 

Taking into account the totality of these circumstances, the Panel finds that Respondent's passive holding of the disputed domain name constitutes bad faith under paragraph 4(a)(iii) of the Policy, 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 had actual knowledge of Complainant's rights in the BLOOMBERG mark at the time of registration. While UDRP precedent does not recognize constructive knowledge alone as a basis for a finding of bad faith, actual knowledge may suffice to support such a finding 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 position, Complainant cites the BLOOMBERG mark's extensive reputation, media coverage, global recognition, and long-standing commercial use. The Panel infers from the notoriety of Complainant's mark that Respondent had actual knowledge of Complainant's rights at the time of registration, which supports a finding of bad faith registration of the disputed domain name pursuant to Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bloombergpuertorico.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: April 23, 2025