Bloomberg L.P. v. Crystal Chen
Claim Number: FA0512000611768
PARTIES
Complainant is Bloomberg L.P. (“Complainant”), represented by Emily Luskin Schonbraun, of Willkie Farr & Gallagher LLP, 787 Seventh Avenue, New York, NY 10019. Respondent is Crystal Chen (“Respondent”), 94696 Lumiauau Street, RR8, Waipahu, HI 96797.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg-china.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially. To the best of each
Panelist’s knowledge, no Panelist has any known conflict in serving as Panelist
in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 19, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 21, 2005.
On December 19, 2005, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <bloomberg-china.com> domain name
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 11, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@bloomberg-china.com by e-mail.
A timely Response was received and determined to be complete on January
11, 2006.
Complainant’s timely additional submission was received on January 17,
2006.
Respondent’s timely additional submission was received on January 17,
2006.
On January 20, 2006, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed the Honorable Louis E. Condon and Anne M.
Wallace as Panelists and Linda M. Byrne as Presiding Panel Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the
disputed domain name, <bloomberg-china.com>, is confusingly similar to
Complainant’s registered service mark BLOOMBERG because it fully incorporates
the BLOOMBERG mark and adds only the geographic term, China. Complainant points out that the <bloomberg-china.com> domain
name is almost identical to a domain name owned by Complainant, namely, <bloombergchina.com>. Complainant relies on four NAF decisions
(three involving the BLOOMBERG mark) finding that the addition of geographic
identifiers does not prevent a finding of confusing similarity.
Complainant also contends that
Respondent has no rights or legitimate interests in respect of the <bloomberg-china.com> domain
name. Complainant has not licensed or
otherwise permitted Respondent to use the BLOOMBERG mark in a domain name or
otherwise. Respondent has never been
commonly known as “Bloomberg” or acquired any trademarks in that name.
Moreover, because “Bloomberg” has no meaning other than to identify
Michael R. Bloomberg (the mayor of New York City) and his former company,
Complainant considers it unlikely that Respondent independently arrived at its
variant of the Bloomberg domain name.
Complainant asserts that the web page posting to <bloomberg-china.com> is not a good-faith use of the domain name. Complainant sent a cease and desist letter to Respondent on November 14, 2005. As of that date, the <bloomberg-china.com> domain name posted to a web page containing a generic search engine. Since at least November 28, 2005 (after the letter was sent), the domain resolves to a personal web page, devoted to an unborn child to be named “Bloomberg” if the child is a boy. The site mentions that another site reveals the intended name if the child is a girl, but there is no link to the latter site.
B. Respondent
Respondent argues that the <bloomberg-china.com> website
contains a disclaimer, i.e., it clearly states, “If you are looking for the world
famous news and information service company Bloomberg, please go to www.bloomberg.com.” Respondent asserts that this disclaimer
prevents any confusion. Further,
Respondent notes that the site is not used for commercial purposes as it is
intended simply to provide information about Respondent’s unborn child.
Respondent states that she purchased the domain name in honor of her
unborn child, who is to be named “Bloomberg.”
Respondent chose this name due to her husband’s visit to Bloomberg in
Germany, as well as the fact that the English translation of the term
“bloomberg” is “flower mountain.”
Respondent argues that the domain name was not registered in bad faith
because it was purchased as a gift for Respondent’s unborn child. The domain name was registered on October
27, 2005, seven days after learning of the pregnancy. The site was launched on November 23, 2005, five days after the
first doctor visit confirming the pregnancy.
Respondent has no intention of profiting from the domain name, nor does
she conduct any business in connection with the domain name.
C. Additional Submissions
Complainant asserts that Respondent’s disclaimer constitutes an
admission that the BLOOMBERG mark/name is famous. The <bloomberg-china.com> web site currently states
“. . . the world famous news and
information service company Bloomberg. . . .”
This admission implies that Respondent knew of Complainant’s famous
mark, BLOOMBERG, when the domain name was registered.
Complainant
also argues that Respondent has not offered a credible, good-faith basis for
incorporating Complainant’s BLOOMBERG mark into the domain name in
question. Respondent’s assertion that
“bloomberg” has a “good meaning” in English is misleading because “bloomberg”
has no meaning in English other than as a surname, e.g. the surname of the
mayor of New York City, Michael R. Bloomberg, or as the company name for
Bloomberg L.P. One online dictionary,
Dictionary.com, defines “bloomberg” in the context of Complainant’s business,
as “a major global provider of 24-hour financial news and information . . .
.” Respondent’s mention of a German
locale named Bloomberg and the translation of “bloomberg” in some European
languages does not explain the use of the term “bloomberg” in the domain name,
according to Complainant. Instead,
Complainant asserts that the use of the name is a bad faith attempt to trade
upon Complainant’s company name and trademark.
Respondent states that the “bloomberg” name is attractive because it
means “success and prosperous” in Chinese and “flower hill” in American Jewish
and Swedish. Respondent is aware of
famous people with the name “Bloomberg” such as Kristin Mapel-Bloomberg, an
English professor at Hamline University, and Michael R. Bloomberg, the mayor of
New York City.
Respondent argues that there is no evidence that Respondent is
attempting to trade upon the BLOOMBERG name.
Respondent asserts that the domain name was registered for a bona fide reason prior to any notice of
the dispute. The domain name’s web site
is devoted to Respondent’s unborn child with no commercial activity
involved. The Respondent does not
intend to make money from the domain name.
FINDINGS
Complainant owns two registered service marks for BLOOMBERG (U.S. Reg. Nos. 2,045,947 and 2,736,744) as part of an extensive U.S. and international family of marks containing the word BLOOMBERG. Complainant owns BLOOMBERG registrations in at least ninety-five countries, including fifty-four marks in China. The Chinese marks are registered in English, traditional Chinese characters, and simplified Chinese characters.
Complainant has owned the <bloomberg.com> domain name since 1993 and owns over one thousand domain names that incorporate the word “bloomberg.” Complainant also owns many defensive registrations of domain names incorporating misspellings of the word “bloomberg,” at least nineteen “.cn” domain names that use the word “Bloomberg,” and eleven domain names using the word “Bloomberg” in Chinese characters.
Complainant has done business as Bloomberg
L.P. since 1981 and has operated under the “Bloomberg” trade name in the United
States and around the world since at least 1987. Since its inception, Complainant has become one of the largest
providers of worldwide financial news and information and related goods and
services. Complainant’s advertising and
promotion of its services in association with the BLOOMBERG mark has created
significant goodwill and consumer recognition.
Respondent is expecting a baby, and
Respondent intends to name the baby “Bloomberg” if the child is a boy. Respondent does not use the <bloomberg-china.com>
domain name to conduct business or commercial transactions.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 Complainant’s U.S. and
international registrations for the BLOOMBERG mark, this Panel finds that
Complainant has demonstrated rights pursuant to Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The Panel finds that the <bloomberg-china.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark, because the only differences are the additon of a hypen and the word “china,” which create little distinction between the domain name and the mark. The domain name is also confusingly similar to at least one of Complainant’s domain names, <bloombergchina.com>. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark); CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); Bloomberg L.P. v. Elec. Media Servs., FA 96438 (Nat. Arb. Forum Feb. 19, 2001) (finding the <bloombergtvasia.com> and <bloombergasia.com> domain names confusingly similar to the registered BLOOMBERG mark as the addition of the suffixes “asia” and “tvasia” did not add any uniqueness or distinguishing features to the existing BLOOMBERG mark); Bloomberg L.P. v. Affluent Harbor Holdings Inc., FA 97352 (Nat. Arb. Forum July 9, 2001) (in finding the <chinabloomberg.com> domain name confusingly similar to the registered BLOOMBERG mark, the Panel found that “the addition of the word ‘China’ does not sever the link between the BLOOMBERG mark and Complainant’s business”).
This Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
The Panel finds that there is nothing in the
record, including the WHOIS registration information, which demonstrates that
Respondent, Crystal Chen, is commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark). See Cricket
Techs., L.L.C. v. Martin, FA 311353 (Nat. Arb. Forum Sept. 27, 2004)
(“Although Respondent is listed as the Administrative contact in the WHOIS
domain name registration information, nothing suggests that Respondent is
commonly known by the <crickettechnologies.com> domain name pursuant to
Policy ¶ 4(c)(ii).”); see also Target Brands, Inc. v. Hosting Provider Serv.,
FA 187396 (Nat. Arb. Forum Sept. 30, 2003)
(“While Respondent may have held itself out as TARGETPILLS.COM on its
website at <targetpills.com>, there is no evidence that Respondent was
actually or commonly known by the disputed domain name.”).
Further, Respondent does not prove her rights or legitimate interest in the domain name by asserting the Respondent’s intention to name her unborn child “Bloomberg.” See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).
The Respondent clearly has the right to name her child “Bloomberg.” However, in order to prevail on this issue, Respondent must prove that she made preparations to name the baby “Bloomberg” before she received notice of this domain name dispute. Although the current <bloomberg-china.com> site features a baby, the site was not activated until after Respondent received a letter from Complainant.
In view of the
above, the Panel concludes that Respondent has no legitimate rights or
interests in the <bloomberg-china.com> domain name.
Complainant’s BLOOMBERG mark is famous, and the public is likely to associate the word “Bloomberg” with Complainant’s worldwide business. Respondent’s use of Complainant’s mark indicates bad faith registration and use, because Complainant’s fame and registrations gave Respondent constructive notice of its rights in the mark. The Respondent’s home page indicates knowledge of the notoriety of the mark by referring to Bloomberg as being world famous. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
By creating a likelihood of confusion,
Respondent is acting in bad faith. Pitney Bowes Inc. v. Ostanik,
D2000-1611 (WIPO Jan. 24, 2001) (use of Complainant's mark to attract consumers
to buy Complainant's, or others', products is in bad faith because it is likely
to cause confusion); Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12,
2000) (use of the domain names <caterpillarparts.com> and
<caterpillarspares.com> to drive consumers to a "want-ad" web
site for parts constitutes bad faith); Tall Oaks Pub'g, Inc. v. Nat’l Trade
Publ'ns, Inc., FA 94346 (Nat. Arb. Forum May 5, 2000) (use of domain name
comprised of the complainant's mark in a manner likely to cause initial
interest confusion demonstrates bad faith).
Before the <bloomberg-china.com>
website referenced Respondent’s baby, the website featured a list of links to
third parties. Respondent evidently
changed the website content after Complainant sent its cease-and-desist letter
to Respondent. Using another’s mark to
lead Internet users to unrelated businesses is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Prudential Ins. Co.of Am. v.
Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001)
(finding no rights or legitimate interests in the disputed domain name where
the respondent was using the complainant’s mark to redirect Internet users to a
website offering credit card services unrelated to those services legitimately
offered under the complainant’s mark); Wal-Mart
Stores, Inc. v. Walmarket Can., D2000-0150 (WIPO May 2, 2000) (finding that
the respondent had no rights or legitimate interests where he decided to
develop the website for the sale of wall products after receiving the
complainant’s “cease and desist” notice).
It is true that Respondent’s
website evidently has no commercial purpose, which weighs against a finding of
bad faith. It is therefore unclear why
Respondent chose the top level domain “.com,” which is intended for commercial
use. However, this factor is not
determinative on the issue of bad faith, because many nonprofit organizations
use the “.com” top-level domain. In
this situation, it would seem logical for Respondent to elect use of the
“.name” top-level domain.
In any event, Respondent’s use of the <bloomberg-china.com> domain name has a commercial impact, even if it is not intended. People are likely to enter the <bloomberg-china.com> name when seeking information about Complainant’s operations in China. Complainant’s extensive presence on the Internet make it likely that an internet user would believe that the <bloomberg-china.com> domain name is affiliated with Complainant, especially in view of the fact that Complainant is active in the Chinese market. This confusion has a detrimental impact on Complainant’s business.
In view of the above, Complainant has
satisfied its burden of proving the bad faith element of the Policy.
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 <bloomberg-china.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Louis E. Condon, Panelist
Anne M. Wallace, Panelist
Linda Byrne, Panel Chair
Dated: February 3, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum