Bloomberg Finance L.P. v. Individual c/o Maria Luisa Cisneros
Claim Number: FA1003001313483
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.tv>, registered with Register.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2010.
On March 16, 2010, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bloombergbusinessweek.tv> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 March 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2010 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@bloombergbusinessweek.tv. Also on March 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of a Written Notice, as defined in Rule 1. 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.tv> domain name is confusingly similar to Complainant’s BLOOMBERG and BUSINESS WEEK marks.
2. Respondent does not have any rights or legitimate interests in the <bloombergbusinessweek.tv> domain name.
3. Respondent registered and used the <bloombergbusinessweek.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bloomberg Finance L.P., has registered with the United States Patent and Trademark Office (“USPTO”) its BLOOMBERG mark (Reg. No. 2,736,744 issued July 15, 2003) and its BUSINESS WEEK mark (Reg. No 549742 issued October 23, 1951). Complainant uses the marks in connection with financial information and analysis services. Complainant operates numerous domain names related to its marks including but not limited to the <bloomberg.com> and <bloombergbusinessweek.com> domain names.
Respondent, Individual c/o Maria Luisa Cisneros, registered the disputed domain on October 14, 2009. The disputed domain name resolves to a website with links to third-party websites to include Complainant’s competitors and Complainant’s websites. Respondent has also made a specific offer to sell the disputed domain name to the Complainant for the amount of no more than $4000 USD.
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.
Complainant asserts it has rights in its marks due to its registration with the USPTO of its BLOOMBERG mark (Reg. No. 2,736,744 issued July 15, 2003) and its BUSINESS WEEK mark (Reg. No 549,742 issued October 23, 1951). The Panel finds that these USPTO registrations are sufficient to establish Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s disputed domain name is confusingly similar to
Complainant’s BLOOMBERG and BUSINESS WEEK marks because Respondent’s <bloombergbusinessweek.tv> domain
name combines Complainant’s marks, removes the space in Complaiant’s BUSINNESS
WEEK mark, and adds the country-code top-level domain (“ccTLD”) “.tv.” The Panel finds that such minor alterations
to Complainant’s registered mark do not negate the confusingly similar aspects
of Respondent’s domain name pursuant to Policy 4(a)(i). See 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); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see
also World Wrestling Fed'n
Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain
(ccTLD) designation <.tv> does not serve to distinguish [the disputed
domain] names from the complainant’s marks since ‘.tv’ is a common Internet
address identifier that is not specifically associated with Respondent.”);
see also Bond
& Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of
a gTLD do not establish distinctiveness from the complainant’s mark under Policy
¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case in support of this allegation, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy 4(a)(ii).”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Further, Complainant asserts no license or other authorization has been given to Respondent to use the BLOOMBERG and BUSINESS WEEK marks. The WHOIS information for the disputed domain name lists “Individual c/o Maria Luisa Cisneros” as the registrant, which indicates that Respondent is not commonly known by the <bloombergbusinessweek.tv> domain name, and Respondent has not offered any affirmative evidence to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the disputed domain name to resolve to a
website with links to third-party websites that include links to Complainant’s
competitors and Complainant’s websites.
The Panel finds that Respondent’s use of the <bloombergbusinessweek.tv> domain name is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Skyhawke Techs., LLC v.
Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007)
(“Respondent is using the <skycaddy.com> domain name to display a list of
hyperlinks, some of which advertise Complainant and its competitors’
products. The Panel finds that this use
of the disputed domain name does not constitute a bona fide offering of goods
or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007)
(concluding that the use of a confusingly similar domain name to operate a
portal with hyperlinks to various third-party websites, some of which may be in
direct competition with a complainant, does not constitute a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii)).
Complainant provides evidence in the form of e-mails indicating Respondent’s attempt to sell the disputed domain name to Complainant. Complainant asserts that Respondent’s specific offer to sell the disputed domain name, in the amount of $4000 USD, is significantly higher than the presumed cost to register the disputed domain name. Complainant further asserts that Respondent is attempting to profit with constructive knowledge of Complainant’s BLOOMBERG and BUSINESS WEEK marks. The Panel finds that this willingness to sell the disputed domain is further evidence Respondent lacks rights and legitimate interests in the <bloombergbusinessweek.tv> domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant asserts that Respondent’s specific offer to sell
the disputed domain name to the Complainant, in the amount of $4000 USD, is
significantly higher than the presumed out-of-pocket costs to Respondent to
register the <bloombergbusinessweek.tv>
domain name. The Panel finds that this willingness to sell the <bloombergbusinessweek.tv> domain
name qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4,
2007) (“Respondent offered to sell the disputed domain name to Complainant for
$4,000. The Panel finds that th[is offer] to sell the disputed domain name constitute bad
faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27,
2002) (“[I]n determining whether Respondent has sought consideration in excess
of its out-of-pocket costs, the Policy makes clear that only costs related to
the domain name are to be considered, and not those related to the creation or
maintenance of the connected website”).
As Respondent’s disputed domain name redirects Internet users to a web directory with links to third-party competitors of Complainant, the Panel finds Respondent’s registration and use of the <bloombergbusinessweek.tv> domain constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant asserts that Internet users, searching for Complainant’s products, will be confused by the disputed domain name when it resolves to a web directory with links to third-party competitors of Complainant. Further, Internet users may become confused as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website. The Panel infers that Respondent receives click-through fees from displaying links to third-party competitors of Complainant. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Therefore, the Panel finds such use of the <bloombergbusinessweek.tv> domain name for Respondent’s own commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant alleges that Respondent is engaged in the practice of opportunistic domain name registration through its registration and use of the <bloombergbusinessweek.tv> domain name. Complainant proffers a press release from October 13, 2009 announcing its intention to purchase the BusinessWeek magazine. Respondent’s initial registration of the disputed domain name is October 14, 2009, a mere day after Complainant’s press release. The Panel finds the registration of the <bloombergbusinessweek.tv> domain name within one day of the press release is evidence an opportunistic registration and use in bad faith. The Panel concludes that this is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”); 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.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
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.tv> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 22, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum