Bloomberg Finance L.P. v. Amir Hossein Ali Naseri
Claim Number: FA1804001782697
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Amir Hossein Ali Naseri (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergmortgagetradecentre.com> (the “Domain Name”), registered with GoDaddy.com, LLC.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2018; the Forum received payment on April 20, 2018.
On April 20, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the Domain Name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2018 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 firstname.lastname@example.org. Also on April 20, 2018, 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.
A timely Response was received and determined to be complete on May 10, 2018.
On May 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
A timely Additional Submission was received from Complainant on May 15, 2018.
A timely Additional Submission was received from the Respondent on May 21, 2018.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
The Domain Name is confusingly similar to the trademark BLOOMBERG, in which Complainant has rights, and Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to its rights in the BLOOMBERG mark, Complainant says this complaint is based on Chilean Registrations 1035931, 1226380, and 1226381; Czech Registrations 257639 and 216914; and South Korean Registrations 113526, 44948, 44947, 389613, 43099, 389612, 49368 and 5499.
Complainant also refers to numerous United States trademark registrations in the name of a wholly owned subsidiary, Bloomberg Finance One L.P., including BLOOMBERG, U.S. Registrations 2736744, 3430969, and BLOOMBERG.COM, U.S. Registration 2769201, and to other registrations of the word BLOOMBERG in over 100 countries by affiliated companies.
Complainant owns the domain names <bloomberg.com>, registered September 29, 1993; <bloomberg.net>, registered March 8, 1997; and <bloomberg.org>, registered December 18, 1997. The domain name <bloomberg.com> has been in continuous use by Complainant and its predecessor in interest since its registration in 1993. In addition, Complainant and its affiliated companies own over 3,000 other domain names incorporating the word “bloomberg,” including many defensive registrations of marks spelling “bloomberg” incorrectly.
Complainant’s corporate parent, Bloomberg L.P., has been in business continuously since 1981, and has operated under the “Bloomberg” name in the United States and around the world since 1987. Bloomberg L.P. currently uses the “Bloomberg” trade name under licence from Complainant.
Since the inception of the business in 1981, and the adoption of the “Bloomberg” name in 1987, Complainant and its affiliated companies have become one of the largest providers of global financial news and data and related goods and services and are recognized and trusted worldwide as a leading source of financial information and analysis. One of the many products and services offered by Complainant and its affiliated companies is the BLOOMBERG TERMINAL, which provides access to news, analytics, communications, charts, liquidity, functionalities, and trading services.
An article from the April 2004 issue of Trademark World identified BLOOMBERG as one of the most well-known marks in the world.
As to confusing similarity, Complainant says the Domain Name fully incorporates the BLOOMBERG mark and adds only the generic words “mortgage trade centre”. In similar circumstances the following domain names have been held confusingly similar to Complainant’s BLOOMBERG mark: <bloomberghedgefund.com>, Bloomberg Finance L.P. v. Benjamin West/Top Media LTD, FA1706001734780; <bloombergcrypto.com>, Bloomberg Finance L.P. v. Protection of Private Person, FA1712001763459; and <bloombergchannel.com>, Bloomberg L.P. v. Kevin Scharf, FA0012000096264.
Complainant asserts that it is likely that an Internet user would mistakenly
believe the website accessible by the Domain Name is affiliated with Complainant. This is particularly true where, as here, Complainant’s Marks are famous in fields relating to a wide variety of financial services, including the trading of mortgage-backed securities, which appears to be Respondent’s purported business. Moreover, Respondent’s Domain Name currently points to a client login portal, further exacerbating potential confusion for consumers who may believe they are logging into one of Complainant’s products.
As to legitimacy, Complainant says it has not licensed or otherwise permitted Respondent to use Complainant’s marks or any of the marks of its affiliated companies, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
On March 13, 2018, Complainant sent a demand letter to the e-mail address listed on Respondent’s WHOIS information. Respondent acknowledged that he has no bona fide use of the BLOOMBERG mark. Respondent’s only arguments – which appear to be that Respondent was able to purchase the Domain Name from GoDaddy and list the term “Bloomberg Mortgage Trade Centre” with the U.K. Financial Conduct Authority (“FCA”) – miss the mark. This is because neither GoDaddy nor the FCA reviewed the name “Bloomberg Mortgage Trade Centre” for trademark abuse or infringement, leaving Complainant with this UDRP remedy to address Respondent’s infringing conduct.
There is no evidence to suggest that the Respondent currently listed on the WHOIS record is commonly known by the Bloomberg name other than Respondent’s unauthorized FCA listing. As a result, Respondent lacks a basis to
rebut Complainant’s Policy ¶4(a)(ii) claim.
Respondent registered and is using the Domain Name in order to trade upon Complainant’s global reputation. As a result, Respondent cannot claim a right or legitimate interest in the Domain Name based on the notion that it has used the Domain Name or a corresponding name in connection with a bona fide offer of goods or services.
Additionally, Complainant avers that Respondent has no legitimate interest and no basis to claim non-commercial fair use of Complainant’s BLOOMBERG mark. Complainant concludes from the above circumstances that Respondent never intended to provide a legitimate, non-commercial fair use of the Domain Name.
As to bad faith, Complainant says it has a strong reputation and a high-profile presence in the financial and media sectors and is the subject of substantial consumer recognition and goodwill. The <bloomberg.com> domain name was registered by Complainant on September 29, 1993 and has been in continuous use since 1993. Such facts and Respondent’s use of the BLOOMBERG mark lead inescapably to the conclusion that Respondent was aware of Complainant’s marks before registering the Domain Name.
Moreover, Respondent has requested payment in exchange for the transfer of the Domain Name to Complainant, constituting further evidence of Respondent’s bad faith.
Respondent has been in business in the U.K. providing financial advice since October 27, 1993. He uses the trade name “Bloomberg Mortgage Trade Centre” under licenses from the FCA and the U.K. Information Commissioner Office (“ICO”). That trade name has acquired significant goodwill and consumer recognition.
Because Complainant is not registered by either the FCA or the ICO to trade as “Bloomberg” or as “Bloomberg Mortgage Trade Centre”, Respondent was granted permission by those authorities to use the “Bloomberg Mortgage Trade Centre” trade name. Complainant’s trademark rights in the U.K. extend only to BLOOMBERG and BLOOMBERG.COM.
On February 18, 2018 Respondent registered the Domain Name with GoDaddy as well as the domain name <bloombergmortgagetradecentre.co.uk> and did not receive any warning or notification that he is not allowed to use the word “Bloomberg” in a word variation.
Respondent says the Domain Name is not confusingly similar to Complainant’s BLOOMBERG trademark and that it is not likely an Internet user would mistakenly believe the website to which the Domain Name resolves is affiliated with Complainant because “Bloomberg Mortgage Trade Centre” provides financial advice in London, U.K. whereas Complainant provides financial news, information and related goods and services in New York, U.S.A. Respondent is authorized only to provide financial advice on Insurance Meditation [scil Mediation], Mortgage Contracts, Pure Protection and Mortgage Related Insurance, not trading of mortgage-backed securities, as claimed by Complainant. Hence there is no potential confusion for consumers who may believe they are logging into one of Complainant’s products.
Respondent has rights and a legitimate interest in the Domain Name, because “Bloomberg Mortgage Trade Centre” is an approved and registered provider of financial advice in the U.K. and Complainant is not. Complainant provides financial news information and related goods and services in the U.S. Respondent intends to provide non-commercial fair use of the Domain Name.
As to bad faith, Respondent says he has a strong reputation and high-profile presence in providing financial advice and has substantial consumer recognition, goodwill and trust in the U.K. Respondent has been trading since October, 1993 and has used the trade name “Bloomberg Mortgage Trade Centre” since 2001. Such use was in good faith and Respondent was not aware of Complainant.
In response to Complainant’s demand letter, Respondent said he was happy to sell the Domain Name to Complainant if Complainant can prove that Respondent is not allowed to use “Bloomberg Mortgage Trade Centre” in the U.K. This was done in good faith. Respondent also said he would be more than happy to acquire Complainant’s rights in “Bloomberg” and “Bloomberg.com” in the U.K.
Respondent says the Complaint breaches U.K. competition law and U.S. antitrust law and that Complainant’s claim is primarily for the purpose of disrupting the business of Respondent.
C. Additional Submissions
Complainant has satisfied its burden as to all three elements of this UDRP proceeding and Respondent has not offered any credible evidence to the contrary. Nonetheless, Complainant submits this Reply to correct or clarify numerous misstatements contained in the Response.
Complainant has provided sufficient evidence of its trademark rights. Complainant owns over 45 trademark registrations in the U.S., 16 in the U.K. and 18 in the E.U. incorporating the word “BLOOMBERG”. Complainant has registered over 3,000 domain names incorporating its “BLOOMBERG” mark including <bloombergmortgage.com>, <bloombergmortgagecalculator.eu>, and <bloombergmortgagerates.com>, which are strikingly similar to Respondent’s Domain Name.
Contrary to the Response, Complainant and 5 of its affiliates are registered with the FCA, all with the word “Bloomberg” in their corporate names.
Competition law is not the applicable standard by which to determine this proceeding.
Complainant’s services are not limited to “financial news and information in the U.S.” In London alone there are over 40,000 subscribers to Complainant’s BLOOMBERG TERMINAL service and over 300,000 worldwide.
As to legitimacy, Respondent relies on his registration of the Domain Name through GoDaddy and adding the “trade name” “Bloomberg Mortgage Trade Centre” on the FCA and ICO websites. This misapprehends the relevance of those listings and, in any event, there is no evidence that GoDaddy, the FCA or ICO conducted any type of trademark search or clearance or granted a trademark “licence” as Respondent wrongly asserts.
Respondent has not offered any credible evidence that could support a legitimate right in the Domain Name, such as having a family name “Bloomberg”, having incorporated an actual business under the name “Bloomberg”, or having made a trademark use of Respondent’s purported trade name. Presumably, Respondent has not taken these steps because he knows that Complainant will successfully object.
Respondent continues to use the Domain Name in bad faith.
Respondent misleadingly claims to have been doing business under its Trade Name since 2001, but Respondent’s own documents show that the Domain Name was registered three months ago in February 2018 and that Respondent only set up shop with the FCA in late 2017.
Respondent claims that he does not use the name or mark “Bloomberg” but that is obviously incorrect as Respondent has adopted “Bloomberg” as the distinctive component of both its Domain Name and Trade Name.
Making matters worse, Respondent falsely states that “Bloomberg Mortgage Trade Centre” is an “approved firm” by the FCA. But the “approved firm” is TenetLime Ltd., and Respondent is an “appointed representative” of that firm. The Trade Name – which was not added until December 2017 – is several levels removed from the “approved firm” TenetLime Ltd.
In summary, Respondent has not offered any credible evidence to rebut the strong case of confusion in this matter, to demonstrate a right or legitimate interest in the Domain Name, or to show that the registration of the Domain Name was done in good faith. At bottom, Respondent’s purported business along with the Domain Name appear to be little more than an effort to mislead consumers about the source or origin of Respondent’s services in a bad faith attempt to trade off Complainant’s marks.
Respondent refers to “Bloomberg Mortgage Trade Centre” as Respondent.
Complainant has satisfied its right to the word “Bloomberg” only and not “Bloomberg in a word variation”.
Respondent’s first trademark registration on October 27, 1993 predates all Complainant’s trademark registration certificates and domain names.
Six live UK trademark registrations incorporating the word “Bloomberg” do not belong to Complainant. Likewise seven live EU trademark registrations incorporating the word “Bloomberg” do not belong to Complainant. This is another reason that Complainant’s claim is infringing that no one can use the word “Bloomberg” in a word variation as a trademark.
Under U.K. law, more than one person can own a trademark as long as it is used for a different type of product or service. Respondent is a provider of financial advice whereas Complainant is a provider of financial news and data and related goods and services.
Complainant is trying to mislead the Panel by claiming to own <bloombergmortgage.com>, <bloombergmortgagecalculator.com> and <bloombergmortgagerates>, which are not active domains/websites and in which Complainant does not own any trademark registrations or certificates. Owning these inactive domain names in which Complainant does not trade is bad faith and Complainant should transfer these domain names to Respondent, “Bloomberg Mortgage Trade Centre”, which is the provider of mortgage advice to U.K. consumers.
Although Complainant and 5 affiliates, all with the word “Bloomberg” in their corporate names, are registered as an “Individual/Name” with the FCA, Complainant is not registered with the FCA as “Trading/Brand Name”. The only “Trading/Brand Name” registered with the FCA is Respondent’s trading mark “Bloomberg Mortgage Trade Centre”, which is why, after an FCA registry check, permission was granted by the FCA to Respondent to register as trademark “Bloomberg Mortgage Trade Centre” and to trade under that name.
Complainant acknowledges that U.K. competition law precludes judgement in Complainant’s favour. Although that is not the applicable legal standard per ICANN rules, Respondent still feels the Panel should take this into consideration since Respondent is solely a U.K. based firm. Complainant’s “infringing demand” tends to lead to dominating a market, or anti-competitive practices, or creation of a monopoly and the abuse of monopoly power.
Complainant acknowledges that it is one of the world’s largest providers of financial news and data and related goods and services based in New York and that Respondent, “Bloomberg Mortgage Trade Centre” is the provider of financial advice to U.K. consumers based in the City of London.
Respondent has provided credible and legitimate evidence that could support a legitimate right in the Domain Name, such as having incorporated an actual business under the names of “Bloomberg Mortgages” since 1993 and “Bloomberg Mortgage Trade Centre”, registered with FCA and ICO.
Respondent legitimately has been trading for almost 25 years since 1993. He decided to set up a website for the first time in February 2018 in its own right and capacity in good faith to provide financial advice to U.K. consumers and not financial news. Respondent changed network (compliance provider) from “Lighthouse Advisory Services” to “TenetLime Ltd” in 2017 and hence needed to re-register again with the FCA. Respondent’s ICO certificate shows Respondent has been trading continuously since 2001.
Respondent denies Complainant’s assertion that “Bloomberg Mortgage Trade Centre” is not an “approved firm” by the FCA. In the FCA language, Respondent, an “Appointed Representative” is referred to as “Individual, Firm or Person” and “TenetLime Ltd” is referred to as “Principal”.
In summary, Respondent has offered credible/legitimate evidence and a strong case to have interest in the Domain Name whereas Complainant has not demonstrated a right or legitimate interest in the Domain Name.
Complainant has failed to establish all elements required to entitle it to relief.
Rules ¶ 15(a) 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."
Policy ¶ 4(a) requires that Complainant must prove each of the following three elements to obtain an order that the 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 light of these requirements, the principles of competition law which Respondent seeks to invoke regarding the conduct of Complainant are irrelevant and inapplicable. Likewise, the issue whether Respondent’s registration and use of the Domain Name constitute trademark infringement is not for this Panel to determine.
Complainant bases this complaint on its registrations of the trademark BLOOMBERG, as follows (Complaint, Exhibit A):
· Chilean registrations 1035931, registered on August 26, 2013; 1226380, registered on January 16, 2017; and 1226381, also registered on January 16, 2017;
· Czech Registrations 257639 registered on September 29, 2003 and 216914, registered on April 23, 1999; and
· South Korean Registrations 113526, registered on March 7, 2005; 44948, registered on August 3, 1998; 389613, registered on January 5, 1998; 43099, registered on June 26, 1998; 389612, registered on January 5, 1998 and 54991 registered on May 17, 1999.
Complainant also mentions South Korean registrations 44947 and 49368 but has not exhibited the relevant registration certificates.
Complainant does not itself appear to have registered any U.K. marks but, for the purposes of the Policy, it is not necessary for a mark on which a complainant relies to be registered in the country of the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ¶ 1.1.2:
“Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.”
Complainant refers to numerous other registrations in the U.K. and elsewhere for the BLOOMBERG mark and BLOOMBERG-formative marks held by affiliated companies. All the marks mentioned by Respondent as not owned by Complainant appear to be owned by an affiliate of Complainant.
The registrations on which Complainant bases its Complaint suffice to establish its rights in the BLOOMBERG mark. Accordingly, it is unnecessary to consider any of the numerous marks registered by its affiliates.
Identical and/or Confusingly Similar
The specific top-level of the Domain Name, “.com”, is generally regarded as irrelevant for the purpose of determining whether the Domain Name is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
In determining confusing similarity, evidence of actual confusion is not required. The test is an objective one, confined to a comparison of the Domain Name and the trademark alone, independent of the products or services for which the Domain Name may be used or other marketing and use factors usually considered in trademark infringement cases. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000‑1698 and AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327. Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007‑0648.
Here the Domain Name contains Complainant’s BLOOMBERG mark in its entirety, together with the words “mortgage trade centre”, which are not sufficient to distinguish the Domain Name from that mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark being insufficient to differentiate one from the other for the purposes of the Policy).
The Panel therefore determines that the Domain Name is confusingly similar to Complainant’s BLOOMBERG mark per Policy ¶ 4(a)(i).
Complainant has established this element.
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the BLOOMBERG mark is very well-known. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in respect of the Domain Name. See 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 Response exhibits what Respondent describes as trade mark registration certificates for the trademark and service mark “Bloomberg Mortgage Trade Centre”, namely FCA registration No. 791396, effective October 12, 2017; ICO Registration No. Z541212X dated May 23, 2001 and letters dated October 26, 2017 from TenetLime Ltd confirming that Respondent is an Appointed Representative, FCA Registration No. 4190.
The Panel does not accept that these documents constitute trademark registration certificates, since the Intellectual Property Office, the official government body responsible for intellectual property rights in the U.K., is the relevant body which registers trademarks in the U.K.
The material before the Panel shows the following sequence of events:
· in 1981 Complainant’s corporate parent, Bloomberg L.P., commenced business;
· since 1987 Bloomberg L.P. has operated under the “Bloomberg” name in the United States and around the world;
· on September 29, 1993 the domain name <bloomberg.com> was registered and has since been in continuous use by Complainant and its predecessor in interest;
· by an agreement dated October 27, 1993, various Abbey Life companies licensed “Amir Hossein Ali Naseri / Bloomberg Mortgages” as their agent to carry on business as an Abbey Life Associate. The business included selling and advising upon financial products and services (Response, Exhibit E);
· on March 8, 1997 Complainant registered the domain name <bloomberg.net>;
· on December 18, 1997 Complainant registered the domain name <bloomberg.org>;
· on January 5, 1998 the earliest BLOOMBERG trademark registrations on which Complainant relies were registered in South Korea, Nos. 389613 and 389612;
· on August 26, 1999 the Policy was adopted by ICANN. It applies to domain names registered both before and after its adoption;
· on May 23, 2001 Respondent was registered in the ICO register of data controllers, with the trading name “Bloomberg Mortgage Trade Centre” and with his nature of work described as “tied agent”;
· by 2004 the BLOOMBERG mark was recognized as well-known;
· effective from October 12, 2017, Respondent was registered with the FCA with the trading name “Bloomberg Mortgage Trade Centre” as an Appointed Representative, his Principal being TenetLime Ltd;
· a letter dated October 26, 2017 from TenetLime Ltd, addressed to “Bloomberg Mortgage Trade Centre” and beginning “Dear Amir”, confirmed Respondent’s appointment as an Appointed Representative of TenetLime Ltd;
· in another letter on the same day, addressed to “Amir Naseri” “Bloomberg Mortgage Trade Centre”, and commencing “Dear Amir”, TenetLime Ltd wrote:
“We are pleased to confirm that with effect from the 26th October 2017 you are authorized to conduct the following categories of business as a Registered Individual with “Bloomberg Mortgage Trade Centre”, an Appointed Representative of TenetLime Ltd”. The categories included Mortgage Contracts.
· on February 18, 2018 the Domain Name was registered by Respondent. It resolves to a website login page.
This chronology shows that in October 1993 Respondent began to use the trade name “Bloomberg Mortgages” to conduct business as an Abbey Life Associate, selling and advising upon financial products and services. Although the domain name <bloomberg.com> had been registered by Complainant a month earlier, there is no evidence that the word BLOOMBERG had acquired secondary meaning as an unregistered trademark in the U.K. by October 1993. The earliest trademark registrations on which Complainant relies were in South Korea in 1998. Nor is there evidence that the BLOOMBERG mark had become well-known by May 23, 2001, when Respondent was registered in the ICO register of data controllers with the trading name “Bloomberg Mortgage Trade Centre”.
Respondent’s use of the trade name “Bloomberg Mortgages” commencing in 1993 and the trade name “Bloomberg Mortgage Trade Centre” since 2001 lead the Panel to accept that Respondent’s registration of the trade name “Bloomberg Mortgage Trade Centre” with the FCA in October 2017 and the Domain Name in January, 2018, by which dates the BLOOMBERG mark had become well-known, as Respondent must by then have been aware, were consistent with the bona fide provision of financial advice services by Respondent in the U.K. since 1993.
These circumstances satisfy the Panel that, before any notice to Respondent of this dispute, Respondent used a name corresponding to the Domain Name, namely “Bloomberg Mortgage Trade Centre” in connection with a bona fide offering of services and that, accordingly, Respondent has established that he has a legitimate interest in the Domain Name for purposes of Policy ¶ 4(a)(ii).
Since the circumstances set out in Policy ¶ 4(c) are not exhaustive, the Panel finds that Respondent’s use of the trade name “Bloomberg Mortgages” in connection with a bona fide offering of services before any notice to Respondent of this dispute also establishes that Respondent has a legitimate interest in the Domain Name for purposes of Policy ¶ 4(a)(ii).
The Panel also finds that Respondent (as an individual and as a business) has been commonly known by the Domain Name since 2001, even though there is no evidence that Respondent has acquired trademark or service mark rights. This also establishes that Respondent has a legitimate interest in the Domain Name for purposes of Policy ¶ 4(a)(ii).
Complainant has failed to establish this element.
In light of the Panel’s findings in relation to the previous element, it is unnecessary to consider this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Domain Name <bloombergmortgagetradecentre.com> REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: May 24, 2018
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