Bloomberg Finance L.P. v. Trey Smith
Claim Number: FA0912001297337
Complainant is Bloomberg
Finance L.P. (“Complainant”), represented by Fara S. Sunderji, of Willkie Farr & Gallagher LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bloombergbusinessweek.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2009.
On December 3, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bloombergbusinessweek.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 2009 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@bloombergbusinessweek.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bloombergbusinessweek.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or legitimate interests in the <bloombergbusinessweek.com> domain name.
3. Respondent registered and used the <bloombergbusinessweek.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bloomberg Finance L.P., offers financial news
and research products and services.
Complainant has provided these products and services since 1981. Complainant operates the <bloomberg.com>
domain name, and uses the resolving website to offer these financial news and
research products and services. On
October 13, 2009, Complainant purchased the BusinessWeek
magazine and Complainant’s affiliate now owns the BUSINESS WEEK mark. Complainant holds numerous trademark
registrations with the
Respondent, Trey Smith, registered the <bloombergbusinessweek.com> domain name on October 14, 2009. The disputed domain name was registered one day after Complainant purchased the BusinessWeek magazine and currently does not resolve to an active website.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Previous panels have found that a complainant establishes
rights in a mark through a registration of the mark with a governmental
trademark authority. Therefore, the
Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in
the BLOOMBERG.COM mark through its trademark registrations with the USPTO (e.g.
Reg. No. 2,769,201 issued September 30, 2003).
See Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also
Complainant claims Respondent’s <bloombergbusinessweek.com> domain name is confusingly similar to Complainant’s BLOOMBERG.COM mark. The disputed domain name combines Complainant’s entire BLOOMBERG.COM mark with the Complainant’s BUSINESS WEEK mark. The disputed domain name also removes the space from the BUSINESS WEEK mark. The Panel finds the addition of Complainant’s mark and removal of a space fail to adequately distinguish the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Therefore, the Panel finds Respondent’s <bloombergbusinessweek.com> domain name is confusingly similar to Complainant’s BLOOMBERG.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <bloombergbusinessweek.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The WHOIS information, provided by Complainant, lists the registrant as “Trey Smith.” Respondent fails to offer evidence contradicting this information and showing Respondent is commonly known by the <bloombergbusinessweek.com> domain name. There is no other evidence on the record showing Respondent is commonly known by the disputed domain name. Complainant further asserts that Respondent is not authorized to use the BLOOMBERG.COM mark. Therefore, the Panel finds that Respondent is not commonly known by the <bloombergbusinessweek.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent registered the <bloombergbusinessweek.com> domain name one day after Complainant purchased the BusinessWeek magazine. The disputed domain name resolves to an “Under Construction” web page. The Panel finds Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it is not limited to the enumerated factors in Policy ¶
4(b). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.”).
Respondent registered
the disputed domain name one day after Complainant purchased the BusinessWeek magazine. Respondent’s <bloombergbusinessweek.com>
domain name combines Complainant’s BLOOMBERG.COM mark with the BUSINESS WEEK
mark that was obtained by Complainant’s affiliate in the purchase of the BusinessWeek magazine name. The Panel finds Respondent’s registration and
use of the disputed domain name constitutes opportunistic bad faith
registration and use under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO
June 18, 2001) (finding that the respondent’s registration of the
<seveballesterostrophy.com> domain name at the time of the announcement
of the Seve Ballesteros Trophy golf tournament “strongly indicates an
opportunistic registration”); see
also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005)
(“Respondent’s registration of the disputed domain name the same day that
Complainant issued the press release regarding the acquisition constitutes
opportunistic bad faith.”).
Respondent fails to make an active use of the <bloombergbusinessweek.com> domain name. The disputed domain name resolves to an “Under Construction” page. The Panel finds Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergbusinessweek.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 21, 2010
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