Bloomberg Finance L.P. v. None
Claim Number: FA1310001522349
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is None (“Respondent”), Islamic Republic of Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergpersian.com>, registered with Tucows Domains 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013.
On October 2, 2013, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <bloombergpersian.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@bloombergpersian.com. Also on October 3, 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 October 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <bloombergpersian.com> domain name on July 11, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bloomberg Finance L.P. of New York, NY, USA. Complainant is the owner of USA and foreign registrations for the BLOOMBERG mark. Complainant has continuously used its mark since at least 2003 in connection with its provision of goods and services in the financial information industry. Complainant also operates its business on the internet through several websites it owns including, but not limited to, <bloomberg.com>, <bloomberg.net> and <bloomberg.org>.
Respondent is listed as “None” with an address of Tehran, Iran. Respondent’s registrar’s address is listed as Toronto, ON Canada. Respondent registered the disputed domain name on or about July 11, 2013.
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 explains that it uses the BLOOMBERG mark in connection with a variety of services, including the provision of global financial news and data, as well as various financial analyses. Complainant has registered the BLOOMBERG mark with several national registrars, including the USPTO (Reg. No. 2,736,744 registered July 15, 2003), and the CMEFR (Reg. No. 788,883 registered on March 17, 2008). The panel in Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005), found that evidence of trademark registration with more than one trademark agency illustrated sufficient prima facie evidence to establish Policy ¶ 4(a)(i) rights in the mark. The Panel here finds that Complainant has clearly illustrated its Policy ¶ 4(a)(i) rights in the BLOOMBERG mark.
Complainant argues that Respondent’s <bloombergpersian.com> domain name merely adds the term “persian” to the otherwise unique and distinctive BLOOMBERG mark. The Panel notes that the domain name is formed by combining the BLOOMBERG mark, the geographic and descriptive term “persian,” and the generic top-level domain (“gTLD”) “.com.” The Panel notes that gTLDs are necessary in domain names and thus provide no distinction. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also notes that the term “persian,” as it refers historically to the area in and surrounding modern-day Iran, or as it refers to a specific cultural and ethnic tradition, is either geographic or merely descriptive and therefore unprotectably confusingly similar to Complainant’s domain name. See, e.g., Yahoo! Inc. v. Umbeke Membe d/b/a Deleting Domain, FA 1153487 (Nat. Arb. Forum April 10, 2008) (holding the <persianyahoo.com> domain name to be confusingly similar to the YAHOO! mark). The Panel finds that the <bloombergpersian.com> domain name is confusingly similar to the BLOOMBERG mark under Policy ¶ 4(c)(ii).
Respondents make no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant explains that Respondent is not known by the domain name. Complainant asserts that it has not authorized, licensed, or otherwise approved of Respondent’s use of the BLOOMBERG mark in a domain name. The Panel notes that the <bloombergpersian.com> domain name’s WHOIS information is unhelpful and lists “None” as the registrant of record. However, the WHOIS administrative contact information more descriptively lists “Amir Taghizadeh Vahed,” and the WHOIS technical contact is listed as “Amirhasan Kamrava.” The Panel finds that a full reading of the WHOIS record—the only evidence as to Respondent’s identity available to the Panel—provides no basis for finding that Respondent is known by the <bloombergpersian.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant next argues that Respondent uses the <bloombergpersian.com> domain name to provide Persian language news services that compete with Complainant’s BLOOMBERG mark. The Panel notes that the <bloombergpersian.com> domain name resolves to a website that apparently offers news in the Farsi/Persian language. See Amended Compl., at Attached Ex. G. In the case of Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel found that there is no bona fide offering when the respondent offers competing goods through a domain name that included the complainant’s well-known mark. The Panel here finds that Respondent’s use of the <bloombergpersian.com> domain name to promote its own news website is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, of the domain name.
Respondents make no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondents have not provided a response to this action the Respondents have failed to meet their burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent demanded payment in exchange for the transfer of this domain name. The Panel notes that in a series of e-mail exchanges between the parties, one “Emir Taghizadeh” states “[a]s a final suggestion, would you spend cost of our team endeavors and domain registration? It is not fair to get our domain without charge,” and to which Complainant promptly stated that it would not pay for this domain name as Respondent has no right to the domain name. See Amended Compl., at Attached Ex. I. In CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), the panel determined that simply because there can at times be a good faith and legitimate purpose in the sale of domain names, the sale of a confusingly similar domain name without the consent of the trademark holder is evidence of bad faith. The Panel here finds that Respondent’s offering of the <bloombergpersian.com> domain name for sale is evidence of Policy ¶ 4(c)(ii) bad faith.
Complainant also argues that Respondent promotes competing financial and global news information and analysis through its <bloombergpersian.com> domain name. The Panel again notes that the <bloombergpersian.com> domain name’s resolving website includes the entire BLOOMBERG mark in connection with the phrase “www.bloomberg.com” (referring to Complainant’s own website), and is promoting competing news services. See Amended Compl., at Attached Ex. G. The panel in Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), found a likelihood of confusion when the respondent used a confusingly similar domain name to promote its independent and competing business. The Panel here finds that Respondent is using the <bloombergpersian.com> domain name in a way that creates a Policy ¶ 4(b)(iv) likelihood that Internet users will be confused as to the source of the domain name’s website, to the benefit of Respondent’s own business.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergpersian.com> domain name be TRANSFERRED from Respondents to Complainant.
Darryl C. Wilson, Panelist
Dated: November 11, 2013
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