Bloomberg L. P. v. Secaucus Group
Claim Number: FA0104000097077
The Complainant is Bloomberg L. P., New York, NY, USA (“Complainant”). The Respondent is Secaucus Group, New York, NY, USA (“Respondent”) represented by Ari Goldberger.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michaelbloombergsucks.com>, registered with Register.com.
The undersigned certifies that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.), the Honorable Carolyn M. Johnson (Ret.), and David Sorkin, as Panelists.
The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 18, 2001; the Forum received a hard copy of the Complaint on April 23, 2001.
On April 19, 2001, Register.com confirmed by e-mail to the Forum that the domain name <michaelbloombergsucks.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that the Respondent is bound by the Register.com 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 April 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely response was received and determined to be complete on May 14, 2001.
On May 24, 2001, pursuant to the Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.), the Honorable Carolyn M. Johnson (Ret.), and David Sorkin, as Panelists.
On May 21, 2001, the Complainant submitted a Reply to the Respondent’s Response and the Respondent submitted a Supplemental Response. The Panel has considered these submissions.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant. The Complainant also requests the Panel to find that any retaliatory registration of domain names by the Respondent, during or after this dispute, containing the Complainant's mark or the name of its founder to be presumed to be in bad faith. Further, the Complainant requests that the Respondent be enjoined from using the Complainant's mark or name of its founder or variations thereof as part of domain names in the future.
A. The Complainant
The Complainant, Bloomberg, L.P., contends that the Respondent’s registration of the domain name <michaelbloombergsucks.com> is confusingly similar to the Complainant’s mark, BLOOMBERG; that the Respondent has no rights or legitimate interests in the domain name; and that the Respondent registered and is using the domain name in bad faith. The Complainant specifically alleges that the Respondent has failed to create any forum to which First Amendment rights could or should attach and that the Respondent attempted to sell the domain name to the Complainant in excess of out-of-pocket costs directly related to the domain name.
B. The Respondent
The Complainant registered the trademark and service mark BLOOMBERG, March 18, 1997 on the Principal Register of the United States Patent and Trademark Office (hereinafter the "USPTO") as Registration No. 2,045,947 for Classes: 09, 16, 36, 38, 41, and 42.
In addition to the Complainant's mark, the Complainant has registered on the Principal Register of the USPTO, and continually used in commerce, a family of at least twenty-three (23) trademarks and service marks containing the word BLOOMBERG. In addition, the Complainant has obtained registrations for marks containing the word BLOOMBERG in over seventy-five (75) countries around the world.
The Complainant is the owner of the following domain names: <bloomberg.com> registered September 29, 1993; <bloomberg.net> registered March 8, 1997; and <bloomberg.org> registered December 14, 1999. <Bloomberg.com> has been in continuous use by the Complainant since its registration in 1993. The Complainant also maintains a portfolio of over 400 Top Level Domain and Country Code Top Level Domain names, including over thirty (30) domain names transferred under 19 separate UDRP Decisions.
The Complainant is the owner and bona fide senior user of the "BLOOMBERG" trade name. Bloomberg L.P. ("Bloomberg"), a Delaware limited partnership, has been in business since 1983.
The Complainant's substantial advertising and promotion of the Complainant's mark, its BLOOMBERG family of marks, its Bloomberg trade name and its domain names have created significant goodwill and widespread consumer recognition. Since its inception in 1983, Bloomberg has become one of the largest providers of worldwide financial news and information and related goods and services. Bloomberg is recognized worldwide as a leading financial information and analysis source. Bloomberg has over 4,500 employees. Bloomberg is headquartered in New York and serves clients in over 100 countries with 9 sales offices, 2 data centers, and 78 news bureaus worldwide.
The Respondent’s principal, Dan Parisi registered the domain name <michaelbloombergsucks.com> on May 3, 1999.
In the Summer of 2000, the Complainant learned that the domain name had been registered by the Respondent. On August 9, 2000, the Complainant began investigating the use of the domain name. Attempts were made to access the URL several times over the course of several hours. The Complainant received a message stating that “THE PAGE CANNOT BE DISPLAYED” and “THERE IS A PROBLEM WITH THE PAGE YOU ARE TRYING TO REACH AND IT CANNOT BE DISPLAYED.” Over the course of the next several months, the Complainant repeatedly attempted to access the URL and could find no Web site posted to the URL. The Complainant again received a message page which stated that the Web site could not be found.
On April 11, 2001, the Complainant sent an electronic message to the Respondent, asking that he cease and desist from further use of the URL. The Complainant received no response from the Respondent. On April 16, 2001, the Complainant again attempted to access the URL. This time, the Complainant was directed to the <sucks.com> Web page maintained by the Respondent. On April 18, 2001, the Complainant initiated the instant Complaint.
On April 26, 2001, the Complainant’s legal counsel received a telephone call from the Respondent’s legal counsel who said that his client would be willing to “settle the dispute” and transfer the domain name if Mr. Bloomberg would agree to donate money to two organizations of his client’s choice. The Respondent’s counsel did not have the authority to make this offer.
On May 16, 2001, the Complainant again attempted to access the URL. As of that date, the URL still did not direct a reader to any Web site containing any discussion or commentary referring to either Michael R. Bloomberg, or Bloomberg L.P. Instead, the URL only redirected Internet traffic to the <sucks.com> Web site operated by the Respondent. The <sucks.com> Web site contains forums created by the Respondent for public discussion. However, on May 16, 2001, the <sucks.com> Web site contained no forum containing any discussion or commentary referring to either Michael R. Bloomberg, or Bloomberg L.P.
Since 1990 the Respondent has been an advocate of the First Amendment, particularly the rights of people to complain about what troubles them. To further these interests, in 1998, the Respondent began acquiring domain names based on the names of well-known companies, celebrities and politicians to which the Respondent added the word “sucks.” Presently the Respondent owns in excess of 700 such domain names, including the disputed domain name. These domain names point to the Respondent’s website <sucks.com>, a free speech site where people can view criticism directed at certain companies and other entities.
The website <sucks.com> is currently publicized as “A place where all people can get together and vent their grievances about Corporate America, American Politics and Politicians.” The website prominently features a hand with its middle finger extended, surrounded by the words “CORPORATE AMERICA SUCKS.” From the <sucks.com> home page, visitors can enter secondary pages depending on the nature of the commentary they want to post.
The Respondent has never sold any of his “-sucks” names, has never offered them for sale, and has no interest in selling them. Moreover, the Respondent makes no money from the website. The offer to settle the case in return for a charitable contribution was not authorized by Parisi and was the result of a miscommunication between the Respondent and its counsel.
At the time the Respondent registered each of the “-sucks” domain names, it was the Respondent’s intention to link them directly to the <sucks.com> website as soon as practicable. Presently, all the “-sucks” names are actively being used as links to the <sucks.com> website.
In response to the Complainant’s filing of this proceeding, the Respondent has commenced an action for declaratory judgment in the United States District Court for the Southern District of New York entitled Secaucus Group, Inc. v. Michael R. Bloomberg and Bloomberg, L.P., Index No. 01-CV-3741, seeking a declaration that its use of the disputed domain name is not unlawful. Despite having commenced the federal court action, the Respondent requests that the Panel issue a ruling in this proceeding notwithstanding the pending federal action.
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.
This case raises the recurring issue of whether a person may register and use a domain name that contains the name of a famous person or company in order to criticize or allow others to criticize that person or company. The only use the Respondent has made of the disputed domain name has been to link it to the Respondent’s <sucks.com> website, a free speech website where visitors can register their complaints about corporate America, politicians and celebrities. The Respondent makes no money from the disputed name or the website to which the dispute name is linked, and has not offered to sell the disputed name for a profit. For these reasons, the Complainant has failed to prove that the Respondent lacks a legitimate interest in the name or that it has engaged in bad faith.
In addition to transfer of the domain name, the Complainant requests the Panel to find that any retaliatory registration of domain names by the Respondent, during or after this dispute, containing the Complainant's mark to be presumed to be in bad faith and requests that the Respondent be enjoined from using the Complainant's mark as part of domain names in the future. These additional requests of the Complainant are not within the jurisdiction of an ICANN proceeding.
The Complainant has rights in the registered trademark BLOOMBERG. The addition of a common or generic term to a trademark does not create a new or different mark in which the Respondent has rights. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark; thereby, the Respondent’s domain names are confusingly similar).
The intentional registration of a domain name while knowing that the second-level domain contains another’s valuable trademark weighs in favor of a likelihood of confusion. See Minnesota Min. and Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D. Minn. 1998); Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1235-1236 (N.D. Ill. 1996). The domain name in dispute creates a likelihood of confusion because it incorporates as its dominant component the name BLOOMBERG which is the foundation for many of the Complainant’s registered marks. See, e.g., Meridian Mutual Insurance Co. v. Meridian Insurance Group, Inc., 128 F3d. 111 (7th Cir. 1997) (“ ‘if one word or feature of a composite trademark is the dominant portion of the mark, it may be given greater weight than the surrounding elements.’ ”).
Courts and UDRP Panels have addressed the issue of appending the term "-sucks" to another’s trademark. See Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va. 2000) (<lucentsucks.com>); Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998) (<ballysucks.com>); Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (<walmartsucks.com>) Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (<cabelassucks.com>); Wal-Mart Stores, Inc. v. wallmartcanadasucks.com D2000-1104 (WIPO Nov. 23, 2000) (<wallmartcanadasucks.com>); Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (<lockheedmartinsucks.com> and <lockheedsucks.com>). In Lockheed, a majority of the Panel held: “Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark” Id. However, in Cabela’s, the Panel determined that "-sucks" domain names are not immune from scrutiny as being confusingly similar to trademarks to which they are appended. “Each case must be considered in light of the facts presented.” Cabela's Inc. v. Cupcake Patrol, supra. (finding the disputed domain name <cabelassucks.com> confusingly similar to the Complainant's mark, “Cabela’s”). A majority of the Panel agrees with the holding in Cabela’s and concludes that the Respondent’s domain name is confusingly similar to the Complainant’s marks.
By using the Complainant’s marks in its domain names, the Respondent makes it likely that Internet users entering "Bloomberg" into a search engine will find <michaelbloombergsucks.com> in addition to the Complainant’s sites. The requirement of likelihood of confusion is satisfied by the fact that the public searching for the Complainant's products and services will be faced with the domain name found by search engines, and will divert potential users' of the Complainant's products and services by using the Complainant's mark. TPI Holdings, Inc v. AFX Communications a/k/a AFX, D2000-1472 (WIPO Feb. 2, 2001) (The Panel in finding the domain name <autotradersucks.com> to be confusingly similar to the Complainant's mark AUTO TRADER, stated that "Complainant's mark has been intentionally adopted, and the term 'sucks' has been appended to cause consumer interest and confusion in an on-line location not associated with Complainant.")
The conclusion that the Respondent’s domain name is confusingly similar to the Complainant’s marks does not end the inquiry. In those cases where the registrant has added “-sucks” or some other word to the name of the person or company and used it as a domain name linked to a website that criticizes the person or company, the rights of the registrant have been uniformly upheld as a reasonable exercise of free speech rights, as well as a fair use of the person’s or company’s name. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding that the Respondent has rights and legitimate interests to use the <wallmartcanadasucks.com> domain name as a forum for criticism of the complainant). See also Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that the Respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where the Respondent linked the domain name to a “complaint” web site about the Complainant’s products); see also Cabela's Inc. v. Cupcake Patrol, supra. (“The Panel notes that use of a "-sucks" domain name may be justified by fair use or legitimate noncommercial use considerations for free expression forums.”).
The Respondent’s use falls within the “fair use” exception contained in Policy ¶ 4(c)(iii). The exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii) of the Policy. Bridgestone Firestone, Inc., supra. Accordingly, the majority of the Panel concludes that the Respondent has rights or legitimate interests in respect to the domain name.
The third element that the Complainant must show is the Respondent’s bad faith registration and use with respect to the disputed domain names.
As a general proposition, “the same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent.” Bridgestone at § 6 (citing Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d at 535-536). By submitting evidence that the disputed name is being used in connection with a free speech website, the Respondent has effectively foreclosed the Complainant’s ability to prove bad faith.
The Respondent registered the domain name with the intention to link it to a free speech site. Although the Complainant also has presented evidence that the Web site was inactive, the domain name is now linked to a free speech site, thus supporting the Respondent’s statement as to intended use upon registration. The Panel concludes that the domain name was not registered and used in bad faith.
Based upon the above findings and conclusions, Judge McCotter and Judge Johnson find in favor of the Respondent. Mr. Sorkin, concurs in the result by separate opinion. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Denied. The Respondent shall not be required to transfer to the Complainant the domain name <michaelbloombergsucks.com>.
Honorable Charles K McCotter Jr., Panelist
Honorable Carolyn Marks Johnson (Ret), Panelist
June 7, 2001
I concur in the result reached by the majority of the Panel, but do so on different grounds.
In my view, it is unnecessary to inquire into the nature, legitimacy, or timing of Respondent’s activities, because the disputed domain name on its face fails to fall within the scope of the UDRP, being neither identical to nor confusingly similar to any trademark owned by Complainant.
Assuming arguendo that Complainant has trademark rights in the phrase “MICHAEL BLOOMBERG” (or, alternatively, that the inclusion of “michael” in the domain name is inconsequential), the “sucks” suffix precludes any reasonable person from believing that the domain name is associated with or authorized by Complainant. See Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001); Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000).
Since the first element required by the Policy is not satisfied, I would decide the case in Respondent’s favor on that basis without reaching the questions of legitimate interests and bad faith.
David Sorkin, Esq., Panelist
Dated: June 7, 2001
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