Bloomberg Finance L.P. v. Domain Admin / NameNation.com
Claim Number: FA1501001602548
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Domain Admin / NameNation.com (“Respondent”), represented by Daniel Ivanovic, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blomberg.info>, registered with Key-Systems GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2015; the Forum received payment on January 29, 2015.
On January 30, 2015, Key-Systems GmbH confirmed by e-mail to the Forum that the <blomberg.info> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2015 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@blomberg.info. Also on January 30, 2015, 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.
A timely Response was received and determined to be complete on February 19, 2015.
On February 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name <blomberg.info>, be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the BLOOMBERG mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registererd July 15, 2003). The mark is used on or in connection with electronic trading, financial news, and information businesses. The <blomberg.info> domain name is confusingly similar to the BLOOMBERG mark because the domain name encompasses the entire mark and adds the generic top-level domain (“gTLD”) “.info.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known as the domain name nor is in possession of licensing rights to use BLOOMBERG in domain names. Further, the domain name resolves to an inactive webpage.
Respondent has registered and is using the domain name in bad faith. Due to the extensive number of trademark registrations and popularity of the BLOOMBERG mark, Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent does not dispute Complainant’s rights in the BLOOMBERG mark, but argues that the domain name is not confusingly similar to the mark. The addition of the gTLD “.info” serves to distinguish the domain name from the mark and negate any confusing similarity. Also, the omission of the letter “o” creates a different pronunciation for the domain name, which will lead Internet users to associate the domain name with the use of “Blomberg” as a name for various European cities, a mountain in the Bavarian Alps, or a common surname.
Respondent contends that he is using the <blomberg.info> domain name in connection with a bona fide offering of goods or services. Mainly, Respondent contends that it is a generic domain name reseller and specializes in “family names, place names, and geographical locations.” Respondent also argues that the use of “Blomberg” in the domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Lastly, Respondent claims it has disclaimed any affiliation with Complainant.
Respondent has not engaged in bad faith registration or use. The use of “Blomberg” in the <blomberg.info> domain name is generic. Respondent again notes that it has disclaimed any affiliation with Complainant.
(1) The domain name <blomberg.info> 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant has registered the BLOOMBERG mark with the USPTO (e.g., Reg. No. 2,736,744, registererd July 15, 2003). The mark is used on or in connection with electronic trading, financial news, and information businesses. Complainant’s Exhibit A shows multiple trademark registrations in Chile, Japan, and many other countries. Complainant’s Exhibit B is a list of 32 United States trademark registrations with a variant of the Bloomberg name, with registrations dating from 1997 through 2011, in approximately seven trademark and servicemark classes. The Panel is persuaded that these numerous worldwide registrations of the Bloomberg mark, as well as numerous US registrations of marks with the USPTO, dating back to 1997, are sufficient to establish rights in a trademark for purposes of Policy ¶ 4(a). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
In the case at issue, the domain name <blomberg.info> contains the entire registered trademark of Bloomberg, excepting the addition of the gTLD. This Panel finds that the omission in the domain name of a single letter from the mark, that is, the letter “o,” results in confusing similarity. See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark
by one letter). Prior panels have also considered gTLDs to be irrelevant to the confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Therefore, this Panel concludes that the addition of a gTLD does not distinguish the domain name <blomberg.info> from the Bloomberg mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, taken as a whole, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
While Respondent contends that the <blomberg.info> domain name is comprised of a common and generic/descriptive term and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s
disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Rights or Legitimate Interests
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 has provided no evidence to show that he is licensed to use the BLOOMBERG mark in domain names, nor is there any evidence on record to suggest that Respondent is commonly known as the disputed domain name. Rather, Respondent’s Exhibit D shows that “Domain Admin” is listed as the registrant of record for this domain name. Thus, the Panel finds that Respondent
has no rights or legitimate interests under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel has been persuaded that Respondent’s use of the domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel’s review of Complainant’s Ex. G reveals that the domain name <blomberg.info> resolves to a website with “related links,” and therefore is possibly an active website, although Complainant refers to this website as inactive. However, the Panel rules that Respondent’s use of the disputed domain name to promote hyperlinks does not, in itself, show that Respondent has made 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may
be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant has asserted no evidence re: Respondent’s actual knowledge of its marks, prior to its Cease and Desist Letter sent to Respondent on September 03, 2014, which went unanswered. Yet Complainant alleges, due to its extensive list of trademark registrations, as noted above, that Respondent must have had at least constructive knowledge of Complainant's rights in the BLOOMBERG mark when Respondent registered the disputed domain name. Panel agrees with Complainant regarding Respondent's constructive knowledge, based upon its extensive list of trademark registrations, and concludes that Respondent registered the disputed name <blomberg.info> in bad faith according to Policy ¶ 4(a)(iii).
Complainant’s Exhibit D offers convincing evidence of the fame of the BLOOMBERG mark. This exhibit states that Bloomberg News produces over 5000 stories a day, from more than 150 bureaus, in 73 countries. This Bloomberg news content is syndicated to more than 1000 media outlets across 60+ countries. Bloomberg television network is available in over 340 million homes worldwide. And Bloomberg radio reports and program news are syndicated to 200 radio affiliates nationally.
The “fame” of the BLOOMBERG marks is further confirmed by an article in Trademark World, as shown in Complainant’s Ex. F, which cites the BLOOMBERG mark as a famous mark, which is entitled to the protections of the Anti-Dilution statute.
The Panel is further convinced that, due to this worldwide fame of the mark, Respondent had actual notice at the time of the domain name registration and concludes that Respondent registered the disputed name <blomberg.info> in bad faith according to Policy ¶ 4(a)(iii). See 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"); Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge 4 (b0 (iv)by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Panel has reviewed Complainant’s Exhibit G, showing Respondent’s website, which resolves as a result of its domain name <blomberg.info>. This website is captioned as follows: blomberg.info–blomberg Resources and Information.
This descriptor of “blomberg Resources and Information” appended to blomberg.info, is a cause of a likelihood of confusion, as BLOOMBERG is primarily in the news and information business. Respondent’s website contains active hyperlinks which divert internet traffic from Complainant’s website to the counterfeit site. Thus, Respondent is probably profiting from this likelihood of confusion, which triggers Policy ¶ 4(b)(iv) bad faith. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blomberg.info> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: March 13, 2015
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