Michael R. Bloomberg v. Achille Zibi / ACHILLE ZIBI ENTERTAINMENT
Claim Number: FA1304001494879
Complainant is Michael R. Bloomberg (“Complainant”), represented by Meghan Hungate of Willkie Farr & Gallagher LLP, New York, USA. Respondent is Achille Zibi / ACHILLE ZIBI ENTERTAINMENT (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloombergmichaelrubens.org>, <themayormichaelbloomberg.org>, <themayormichaelbloomberg.net>, <themayormichaelbloomberg.com>, <themayorbloombergandfriends.net>, <bloombergmichaelrubens.net>, <bloombergmichaelrubens.com>, <themayorbloombergandfriends.org>, <themayorbloombergandfriends.com>, <themayormichaelrubensbloombergandfriends.org>, <themayormichaelrubensbloombergandfriends.net>, <themayormichaelrubensbloombergandfriends.com>, <themayormichaelrubensbloomberg.org>, <themayormichaelrubensbloomberg.net>, <themayormichaelrubensbloomberg.com>, <themayormichaelbloombergandfriends.org>, <themayormichaelbloombergandfriends.net>, and <themayormichaelbloombergandfriends.com> registered with 1 & 1 INTERNET AG.
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 April 15, 2013; the National Arbitration Forum received payment on April 15, 2013.
On April 18, 2013, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <bloombergmichaelrubens.org>, <themayormichaelbloomberg.org>, <themayormichaelbloomberg.net>, <themayormichaelbloomberg.com>, <themayorbloombergandfriends.net>, <bloombergmichaelrubens.net>, <bloombergmichaelrubens.com>, <themayorbloombergandfriends.org>, <themayorbloombergandfriends.com>, <themayormichaelrubensbloombergandfriends.org>, <themayormichaelrubensbloombergandfriends.net>, <themayormichaelrubensbloombergandfriends.com>, <themayormichaelrubensbloomberg.org>, <themayormichaelrubensbloomberg.net>, <themayormichaelrubensbloomberg.com>, <themayormichaelbloombergandfriends.org>, <themayormichaelbloombergandfriends.net>, and <themayormichaelbloombergandfriends.com> domain names are registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the names. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@bloombergmichaelrubens.org, postmaster@themayormichaelbloomberg.org, postmaster@themayormichaelbloomberg.net, postmaster@themayormichaelbloomberg.com, postmaster@themayorbloombergandfriends.net, postmaster@bloombergmichaelrubens.net, postmaster@bloombergmichaelrubens.com, postmaster@themayorbloombergandfriends.org, postmaster@themayorbloombergandfriends.com, postmaster@themayormichaelrubensbloombergandfriends.org, postmaster@themayormichaelrubensbloombergandfriends.net, postmaster@themayormichaelrubensbloombergandfriends.com, postmaster@themayormichaelrubensbloomberg.org, postmaster@themayormichaelrubensbloomberg.net, postmaster@themayormichaelrubensbloomberg.com, postmaster@themayormichaelbloombergandfriends.org, postmaster@themayormichaelbloombergandfriends.net, postmaster@themayormichaelbloombergandfriends.com. Also on April 19, 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 May 20, 2013, 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bloombergmichaelrubens.org>, <themayormichaelbloomberg.org>, <themayormichaelbloomberg.net>, <themayormichaelbloomberg.com>, <themayorbloombergandfriends.net>, <bloombergmichaelrubens.net>, <bloombergmichaelrubens.com>, <themayorbloombergandfriends.org>, <themayorbloombergandfriends.com>, <themayormichaelrubensbloombergandfriends.org>, <themayormichaelrubensbloombergandfriends.net>, <themayormichaelrubensbloombergandfriends.com>, <themayormichaelrubensbloomberg.org>, <themayormichaelrubensbloomberg.net>, <themayormichaelrubensbloomberg.com>, <themayormichaelbloombergandfriends.org>, <themayormichaelbloombergandfriends.net>, and <themayormichaelbloombergandfriends.com> domain names, the domain names at issue, are confusingly similar to Complainant’s BLOOMBERG PHILANTHROPIES and MICHAEL R. BLOOMBERG marks.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is Michael Rubens Bloomberg, a philanthropist, billionaire business leader, and the Mayor of New York City. Complainant has rights in the BLOOMBERG PHILANTHROPIES mark by way of United States Patent & Trademark Office (“USPTO”) trademark registration, Reg. No. 3,593,373 registered on Mar. 17, 2009.
Complainant has also established rights in the personal MICHAEL R. BLOOMBERG name. His status in the financial industry, as Mayor of New York City, and as a philanthropist have made his name distinct and recognized by the public. Complainant has been a famous individual for over thirty years, with numerous press and news services reporting on him. All of the domain names at issue are confusingly similar to Complainant’s mark on their face. The domain names all include the mark’s dominant portion “Bloomberg” along with various spellings of Complainant’s own name.
Respondent is not commonly known as Mike Bloomberg, Mayor Bloomberg, or any possible variation thereof. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s mark in domain names.
Respondent has not put these domain names to an active use, and only vaguely mentions making a “tribute site” to Complainant on each of the websites associated with the domain names. Respondent asked Complainant to “make him an offer” for the domain names. Complainant offered to reimburse Respondent for all costs of registering the domain names. Respondent’s response to this offer was to inform Complainant that the offer was “insulting [his] intelligence” and that Respondent would be keeping the domain names. Respondent’s request that Complainant “make him an offer” turned out to be a demand for more than out-of-pocket expenses and this demand is evidence of bad faith. Respondent was aware of Complainant’s rights in the mark. Respondent’s passive holding of numerous disputed domain names is evidence of 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 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.
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 is Michael Rubens Bloomberg, a philanthropist, billionaire business leader, and the Mayor of New York City. Complaint has rights in the BLOOMBERG PHILANTHROPIES mark by way of USPTO trademark registration, Reg. No. 3,593,373 registered on Mar. 17, 2009. USPTO registration is sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in the BLOOMBERG PHILANTHROPIES mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant has also established rights in the personal MICHAEL R. BLOOMBERG name. Complainant’s status in the financial industry, as Mayor of New York City, and as a philanthropist have made his name distinct and recognized by the public. Complainant has been a famous individual for over thirty years, with numerous press and news services reporting about him. Complainant’s status as a result of his political, financial, and charitable accomplishments have made the MICHAEL R. BLOOMBERG distinct because the name has become primarily associated with Complainant in the minds of consumers. See Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001) (surveying UDRP disputes concerning the use of personal names, the panel found that “where the complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services”). The Panel therefore finds that Complainant has established common law rights in the MICHAEL R. BLOOMBERG mark under Policy ¶ 4(a)(i).
All of the domain names are confusingly similar to Complainant’s marks on their face. The domain names all include the mark’s dominant portion “Bloomberg” along with various spellings of Complainant’s own name. All of the domain names include various spellings of Complainant’s MICHEAL R. BLOOMBERG mark (including the full spelling of “Rubens” in place of the “R.”) and the dominant portion of the BLOOMBERG PHILANTHROPIES mark, with the addition of generic top-level domains (“gTLDs”), generic terms such as “the,” “and,” or “friends,” and the descriptive term “mayor.” Neither the addition of a gTLD nor the removal of a mark’s spacing prevent the disputed domain names from being confusingly similar to 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.”). The Panel finds that the generic terms featured in these domain names are also insufficient to distinguish the domain names from the marks. See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered). The addition of the term “mayor” enhances confusing similarity, as the term refers to Complainant’s position as the Mayor of New York City. See Am. Int’l Grp., 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). Therefore the Panel finds that all of the domain names at issue are confusingly similar to the marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
Respondent is not commonly known as Mike Bloomberg, Mayor Bloomberg, or any possible variation thereof. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s mark in domain names. The WHOIS information for all of the disputed domain names indicates that Respondent is one “Achille Zibi.” The Panel further notes that this “Achille Zibi” identity is corroborated by e-mail correspondence between the parties, in which Respondent self-identities as “A. Achille Zibi.” Respondent is not commonly known as any of these domain names under Policy ¶ 4(c)(ii) based on this record. See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent has not put these domain names to an active use, and only vaguely mentions making a “tribute site” to Complainant on each of the websites associated with the domain names at issue. Respondent’s inaction in using these domain names, and his vague and skeptical statement regarding the domain name’s potential use, illustrates that Respondent is inactively holding domain names while making neither a Policy ¶ 4(c)(i) bona fide offering nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain names. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent asked Complainant to “make [him] an offer” for the domain names. Complainant offered to reimburse Respondent for all costs of registering the domain names. Respondent’s response to this offer was to inform Complainant that the offer was “insulting [his] intelligence” and that Respondent would be keeping the domain names. It appears to the Panel that Respondent received a cease and desist letter from Complainant and then suggested that Complainant offer to buy those domain names. Respondent’s immediate interest in selling the domain names to Complainant suggests that Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in these domain names. 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s demand for excess money for these disputed domain names is evidence of bad faith. The Panel may note that Respondent initially requested an offer from Complainant, and then apparently grew angry or disappointed when that offer turned out to be limited to Respondent’s actual costs in registering the domain names. Respondent has acted in bad faith under Policy ¶ 4(b)(i) by registering multiple infringing domain names, for no apparent purpose other than to market them to the trademark holder, the Complainant. See 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”).
Respondent’s decision to register multiple infringing domain names and subsequently make absolutely no active use of any of the domain names is evidence of Policy ¶ 4(a)(iii) bad faith use and registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Respondent registered domain names that included Complainant’s full legal name, and the dominant “BLOOMBERG” portion of the mark. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark, and therefore finds bad faith use and registration under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergmichaelrubens.org>, <themayormichaelbloomberg.org>, <themayormichaelbloomberg.net>, <themayormichaelbloomberg.com>, <themayorbloombergandfriends.net>, <bloombergmichaelrubens.net>, <bloombergmichaelrubens.com>, <themayorbloombergandfriends.org>, <themayorbloombergandfriends.com>, <themayormichaelrubensbloombergandfriends.org>, <themayormichaelrubensbloombergandfriends.net>, <themayormichaelrubensbloombergandfriends.com>, <themayormichaelrubensbloomberg.org>, <themayormichaelrubensbloomberg.net>, <themayormichaelrubensbloomberg.com>, <themayormichaelbloombergandfriends.org>, <themayormichaelbloombergandfriends.net>, and <themayormichaelbloombergandfriends.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 22, 2013
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