Bloomberg Finance L.P. v. Stefan Jacobs
Claim Number: FA1405001560595
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Stefan Jacobs (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergblogger.com>, registered with FastDomain 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2014; the National Arbitration Forum received payment on May 21, 2014.
On May 21, 2014, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <bloombergblogger.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 May 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2014 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@bloombergblogger.com. Also on May 22, 2014, 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 June 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i). Since the inception of Complainant’s business in 1981, and the adoption of the BLOOMBERG name in 1987, Complainant has become one of the largest providers of global financial news and data and related goods and services. Complainant is recognized and trusted worldwide as a leading source of financial information and analysis.
Complainant owns registrations for the BLOOMBERG mark in countries all over the world. For example United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,736,744 registered July 15, 2003).
Respondent’s <bloombergblogger.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark. Complainant observes that Respondent fully incorporates Complainant’s BLOOMBERG mark and adds the word “blogger.” Respondent has no rights or legitimate interests in the <bloombergblogger.com> domain name.
Complainant has not licensed or permitted Respondent to use the BLOOMBERG mark or any of Complainant’s family of marks. There is no evidence to suggest that the Respondent currently listed on the WHOIS record is commonly known by the BLOOMBERG mark or the disputed domain name. Respondent’s disputed domain name does not resolve to a functioning website.
Respondent registered and is using the <bloombergblogger.com> domain name in bad faith. Respondent was aware of Complainant’s BLOOMBERG mark before registering the <bloombergblogger.com> domain name.
B. Respondent
Respondent contends as follows:
Respondent failed to submit a formal Response in this proceeding. However, Respondent’s e-mail correspondence to the dispute resolution provider indicates that it consents to transfer the <bloombergblogger.com> domain name to Complainant.
Complainant has trademark rights in the BLOOMBERG mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the at-issue domain name.
Respondent consents to the transfer of the at-issue domain name to Complainant.
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.”).
Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”) Here, since there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant, the Panel follows its rational set out in Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd. FA1471116 (Nat. Arb. Forum January 2, 2013), American Petroleum Institute v. Lynn Matthews, FA1507800 (Nat. Arb. Forum, July 30, 2013) and Microsoft Corporation v. Simon Ward / Game Codes Ltd., FA1534229 (Nat. Arb. Forum, January 16, 2014), as well as in other relevant decisions.
As more fully discussed in the cases cited above, as a necessary prerequisite to Complainant obtaining the relief its requests even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the BLOOMBERG mark through its USPTO trademark registration, as well as other registrations of such mark worldwide. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <bloombergblogger.com> domain name is constructed by adding the generic/descriptive term “blogger” to Complainant’s entire mark and then appending the generic top-level domain, “.com,” to the resulting string. These changes are insufficient to materially distinguish the domain name from Complainant’s BLOOMBERG trademark. Therefore, the Panel finds that Respondent’s <bloombergblogger.com> domain name is confusingly similar to Complainant’s BLOOMBERG trademark under Policy ¶4(a)(i). See Bloomberg L.P. v. Viruality a/k/a Now Corp. a/k/a rahndo, FA 0097095 (Nat. Arb. Forum May 31, 2001) (finding the domain name <bloombergnow.com> confusingly similar to complainant’s trademark BLOOMBERG, because the addition of the generic word “now” does not add any distinguishing features to the mark, and does not render the mark any less recognizable.); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
In light of the foregoing, the Panel concludes that Respondent’s consent-to-transfer the at-issue domain name to Complainant compels the Panel to transfer the domain name as requested. Furthermore, the Panel finds no basis for including substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its instant decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergblogger.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 24, 2014
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