Bloomberg Finance L.P. v. PPA Media Services / Ryan G Foo
Claim Number: FA1301001478654
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <utvbloomberg.com>, registered with Internet.bs Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2013; the National Arbitration Forum received payment on January 4, 2013.
On January 8, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <utvbloomberg.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 January 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2013 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@utvbloomberg.com. Also on January 9, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
This Complaint is based upon the trademark and service mark BLOOMBERG, Indian Regs. 1282725, 724377, 724378B, 1285577, 1285576, 1285575, and 1285574; and Czech Regs. 257639 and 216914. (“Complainant’s Marks”).
1. Other BLOOMBERG Trademark Registrations
In addition, Bloomberg Finance One L.P., a wholly owned subsidiary of Complainant, has obtained registrations for at least thirty-two (32) additional trademarks and service marks containing the word BLOOMBERG in the United States including BLOOMBERG, U.S. Registrations 2736744, 3430969, and BLOOMBERG.COM, U.S. Registration 2769201. Moreover, Complainant and its affiliated companies (collectively, “Bloomberg”) have obtained registrations for marks and continually used marks containing the word BLOOMBERG in over one hundred countries (collectively, “Complainant’s Family of Marks”).
2. Bloomberg’s Domain Names
Complainant is the owner of the following domain names: <bloomberg.com>, registered September 29, 1993; <bloomberg.net>, registered March 8, 1997; <bloomberg.org>, registered December 18, 1997; <bloombergtv.com>, registered March 2, 1999; and <bloombergutv.com>, registered August 5, 2009 (collectively “Complainant’s Domain Names”). <Bloomberg.com> has been in continuous use by Complainant and its predecessor in interest since its registration in 1993. In addition, Bloomberg owns over 1,000 other domain names incorporating the word “bloomberg,” including many defensive registrations of marks spelling “bloomberg” incorrectly.
3. The “Bloomberg” Trade Name
Complainant is the owner and bona fide senior user of the “Bloomberg” trade name (“Complainant’s Trade Name”). Complainant’s corporate parent, Bloomberg L.P., a Delaware limited partnership, has been in business continuously since 1981, and has operated under the “Bloomberg” name in the United States and around the world since at least as early as 1987. Bloomberg L.P. currently uses the “Bloomberg” trade name under license from Complainant.
4. Consumer Recognition of Bloomberg
Complainant’s substantial advertising and promotion of Complainant’s Marks, Complainant’s Family of Marks, Complainant’s Trade Name and Complainant’s Domain Names have created significant goodwill and consumer recognition around the world. Since the inception of the business in 1981, and the adoption of the “Bloomberg” name in 1987, Bloomberg has become one of the largest providers of global financial news and data and related goods and services and is recognized and trusted worldwide as a leading source of financial information and analysis. Bloomberg also owns and operates Bloomberg Television which is a twenty-four hour global network broadcasting business and financial news to over 310 million homes around the world. Bloomberg is headquartered in New York City, and employs more than 15,000 people in over 150 offices around the world.
In 2009, Bloomberg Television entered into strategic partnership with UTV Software Communications and jointly launched “Bloomberg UTV” as a 24-hour English language business and financial broadcast news outlet in India. The channel, which reaches over 30 million households in India, was renamed Bloomberg TV India in August of 2012,
5. Respondent's Registration of the BLOOMBERG Domain Name
Upon information and belief, Respondent, through the privacy protection service Fundacion Private Whois, registered the domain <utvbloomberg.com> (the “Domain Name”) on November 11, 2009 and renewed the registration on October 21, 2012. Days after Complainant filed this Complaint, the WHOIS database record was changed to reflect the true owner of the domain.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds. ICANN Rule 3(b)(ix):
[a.] Respondent’s Domain Name is Confusingly Similar to Complainant’s Marks. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
1. Complainant’s Marks are strong and have gained secondary meaning through their continued use in connection with Complainant’s electronic trading, financial news, and information businesses. BLOOMBERG is the 19th most well-known mark in the world. Due to the wide recognition accrued in Complainant’s Marks as synonymous with high quality financial data, news and analysis, it is obvious that Respondent is attempting improperly to capitalize on this recognition and goodwill.
2. On its face, the Domain Name is confusingly similar to the BLOOMBERG mark and Bloomberg UTV. Respondent’s Domain Name fully incorporates the BLOOMBERG mark and adds only the acronym “utv” in a blatant attempt to garner the goodwill and recognition of the famous BLOOMBERG mark and Bloomberg UTV.
3. To support the assertion that Respondent’s Domain Name is confusingly similar to Complainant’s Marks and Domain Names, Complainant respectfully submits as hyperlinks the following decisions:
a. Bloomberg L.P. v. Virtuality a/k/a Now Corp a/k/a rahndo, NAF Decision 97095, http://domains.adrforum.com/domains/decisions/97095.htm (finding the domain name <bloombergnow.com> confusingly similar to complainant’s trademark BLOOMBERG, because the addition of the generic word “now” “do[es] not add any distinguishing features to the mark, and does not render the mark any less recognizable”);
b. Bloomberg L.P. v. Kevin Scharf, NAF Decision 96264, http://domains.adrforum.com/domains/decisions/96264.htm (finding the domain name <bloombergchannel.com> confusingly similar to complainant’s trademark BLOOMBERG, because “the addition of the generic word ‘channel’ does not negate the confusing similarity”); and
c. Bloomberg L.P. v. Eructer Joseth, NAF Decision 214417, http://domains.adrforum.com/domains/decisions/214417.htm (finding the domain name <bloombergtrust.com> confusingly similar to complainant’s BLOOMBERG mark, because “the disputed domain name appropriates the entire mark and merely adds the generic or descriptive term ‘trust’ at the end of Complainant’s mark. The addition of the generic or descriptive term ‘trust’ fails to sufficiently differentiate the domain name from the mark with regard to Policy ¶4(a)(i)”).
4. Complainant asserts that it is likely that an Internet user would mistakenly believe the website accessible by the URL <utvbloomberg.com> is affiliated with Complainant and specifically with Bloomberg UTV. Currently, the Domain Name resolves to a parking page on which the Respondent has placed advertising links to third-party websites.
[b] Respondent Has No Right or Legitimate Interest in the Domain Name. <ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
1. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s Marks or any of Complainant’s Family of Marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
2. On November 20, 2012, Complainant sent a demand letter by email to the privacy protection service listed on the Domain Name’s WHOIS information. Neither the Respondent nor the privacy protection service replied to this letter.
3. There is no evidence to suggest that the Respondent currently listed on the WHOIS record is commonly known by the name “utvbloomberg.com.” As a result, Respondent lacks a basis to rebut Complainant’s Policy ¶4(a)(ii) claim. See Tercent Inc. v. Lee Yi, NFA Decision 139720, http://www.adrforum.com/domains/decisions/139720.htm (stating that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name”).
5. Moreover, since Respondent’s current and apparently only use of the Domain Name is to provide advertising links to third-party websites, Respondent cannot claim a right or legitimate interest in the domain based on the notion it has used the Domain Name or a corresponding name in connection with a bona fide offer of goods or services. Google Inc. v. tnt digital media, NAF Decision 1424509, http://domains.adrforum.com/domains/decisions/1424509.htm (“Respondent’s parking of the website to advertise services unrelated to the business of Complainant is not a bona fide offering of goods or services”).
6. Additionally, Complainant avers that Respondent has no legitimate interest in 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. See Southern California Gas Company v. Private Registrations Aktien Gesellschaft/PrivacyProtect.org, WIPO Decision D-2012-1560, http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1560 (“Respondent is operating a parking page displaying qualified sponsored links with a pay-per-click system; hence the Respondent cannot be making a noncommercial or fair use of the disputed domain name”).
[c.] Respondent Registered and Used The Domain Name in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
1. Complainant 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 Bloomberg on September 29, 1993 and has been in continuous use since 1993. Moreover, from 2009 until its rebranding in August 2012, Bloomberg UTV was a well-established 24-hour English language business and financial broadcast news outlet in India reaching over 30 million households. 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. Indeed, arbitrators have routinely found bad faith in circumstances where it is unlikely the registrant would have selected the domain name without knowing the reputation of the well known trademark in question. See Northwest Airlines, Inc. v. Mario Koch, NAF Decision 95688, http://www.adrforum.com/domains/decisions/95688.htm (“The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). See also Samsonite Corp. v. Colony Holding, NAF Decision 94313, http://domains.adrforum.com/domains/decisions/94313.htm (finding evidence of bad faith includes constructive knowledge of a commonly known mark at the time of registration).
2. Furthermore, Respondent clearly registered this Domain Name in bad faith because it “knowingly [is] using the disputed domain name to resolve to a website on which there are sponsored links and advertisements that are causing confusion among Internet users and taking an unfair benefit from Internet traffic that associates the disputed domain name with the Complainant’s business.” Southern California Gas Company v. Private Registrations Aktien Gesellschaft/PrivacyProtect.org, WIPO Decision D-2012-1560, http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1560. In addition, Respondent’s use of a privacy protection service in order to mask his identity along with Respondent’s failure to respond to Complainant’s cease and desist letter are further evidence of bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, WIPO Decision D2004-0453, http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0453.html (finding bad faith because Respondent used a “privacy protection feature to mask its true identity” and failed to respond to Complainant’s demand letter).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 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.”).
Complainant claims rights in numerous marks derivative of the term “Bloomberg,” including the BLOOMBERG.COM mark. Complainant has presented evidence of its registration of the BLOOMBERG.COM mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,769,201 registered September 30, 2003). The Panel finds that that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority).
The <utvbloomberg.com> domain name attaches the term “utv” to Complainant’s BLOOMBERG.COM mark. Complainant operated an English language business and financial news outlet in India known as “Bloomberg UTV” from 2009 until the outlet’s rebranding in August of 2012. Accordingly, the Panel finds Respondent’s addition of the term “utv” to Complainant’s mark is descriptive of Complainant’s business. The addition of a term which describes complainant’s business does not adequately distinguish a disputed domain name under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). The Panel finds Respondent’s <utvbloomberg.com> domain name is confusingly similar to Complainant’s BLOOMBERG.COM mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <utvbloomberg.com> domain name, Complainant has not licensed or otherwise permitted Respondent’s use of Complainant’s marks or Respondent’s registration of any domain name incorporating Complainant’s marks. The WHOIS information presently identifies Respondent as “PPA Media Services / Ryan G Foo.” Respondent has not provided any evidence to suggest that it is commonly known by the disputed domain name. The Panel finds Respondent is not commonly known by the <utvbloomberg.com> domain name within the meaning of 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).
Complainant claims the <utvbloomberg.com> domain name resolves to a website which only provides advertising links to third-party websites, suggesting Respondent’s lack of rights and legitimate interests in the domain. Panels have refused to recognize rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) when a respondent uses a disputed domain name solely for the purpose of operating a parked page featuring third-party hyperlinks. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Based upon the undisputed facts of this case, Respondent’s use of the <utvbloomberg.com> 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).
Before this proceeding was brought, Respondent registered the disputed domain name using a WHOIS privacy service. This Panel has repeatedly held a Respondent cannot acquire rights to a domain name in a commercial context while it is registered under a WHOIS privacy services’ name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent’s bad faith registration and use of the <utvbloomberg.com> domain name is evidenced by Respondent’s operation of ‘a website on which there are sponsored links and advertisements that are causing confusion among Internet users and taking an unfair benefit from Internet traffic that associates the disputed domain name with the Complainant’s business.” It seems obvious Respondent derives some commercial benefit from the sponsored advertisements featured on its site and Respondent is capitalizing on confusion it created as to the source of the disputed domain. The Panel finds Respondent’s registration and use of the <utvbloomberg.com> domain name constitutes attraction of Internet users for commercial gain by creating confusion with Complainant’s mark as to the source of the website, proving bad faith under Policy ¶4(b)(iv).
Complainant argues Respondent was aware of Complainant and its rights prior to Respondent’s registration of the <utvbloomberg.com> domain name, citing Complainant’s operation of an Indian news outlet that was known as “Bloomberg UTV” from 2009 until August 2012. Apparently 30 million households were reached by Complainant’s “Bloomberg UTV” outlet. Based upon the timing of Respondent’s registration of the disputed domain name, it appears obvious Respondent had actual knowledge of Complainant's mark and rights. Based upon these uncontested facts, the Panel concludes Respondent registered the <utvbloomberg.com> domain name in bad faith pursuant to Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Furthermore, Respondent registered the disputed domain name using a WHOIS privacy service. This Panel has repeatedly held such a registration (in a commercial context) raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <utvbloomberg.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, February 12, 2013
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