Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person
Claim Number: FA1509001638757
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Nikita A Paskhalnyy / Private Person (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rusbloomberg.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2015; the Forum received payment on September 21, 2015.
On September 22, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <rusbloomberg.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@rusbloomberg.com. Also on September 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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’s Contentions
1. Complainant has registered the BLOOMBERG trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003). The mark is used on or in connection with the provision of electronic trading, financial news, and information businesses. Complainant argues that the <rusbloomberg.com> domain name is confusingly similar to the BLOOMBERG trademark because the domain name contains the entire mark and differs only by the addition of the letters “rus” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Rather, the disputed domain name resolves to a webpage that offers Complainant’s own services, only in the Russian language.
3. Respondent has engaged in bad faith registration and use because Respondent had actual knowledge of Complainant’s rights in the BLOOMBERG mark at the time the disputed domain name was registered.
B. Respondent’s Contentions
1. Respondent failed to submit a timely response.
1. Respondent’s <rusbloomberg.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or legitimate interests in the <rusbloomberg.com> domain name.
3. Respondent registered or used the <rusbloomberg.com> domain name 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:
(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 has registered the BLOOMBERG trademark with the USPTO (e.g., Reg. No. 2,736,744, registered July 125, 2003). The mark is used on or in connection with the provision of electronic trading, financial news, and information businesses. The Panel finds that registration with the USPTO is sufficient to establish trademark rights under Policy ¶ 4(a)(i). 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.”).
Complainant argues that the <rusbloomberg.com> domain name is confusingly similar to the BLOOMBERG trademark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the letters “rus” and the generic top-level domain (“gTLD”) “.com.” As a general rule, the gTLD “.com” will never be able to, on its own, distinguish a domain name from the mark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Also, prior panels have established a confusing similarity where the domain name contains the entire mark and differs only by adding letters that could stand for the abbreviation of a country or some other type of geographic entity. See InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Thus, the Panel finds that the <rusbloomberg.com> domain name is confusingly similar to the BLOOMBERG trademark under Policy ¶ 4(a)(i).
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.”).
Complainant asserts that Respondent is not commonly known as the <rusbloomberg.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the BLOOMBERG mark in domain names. The Panel notes that “Nikita A Paskhalnyy” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests 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 argues that Respondent’s use of the <rusbloomberg.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent is using the domain name and the BLOOMBERG mark to offer Complainant’s own services in the Russian language. The Panel notes that the domain name resolves to a webpage that appears to offer financial news in Russian. See Compl., at Attached Ex. G. The Panel also notes that, in an email to Complainant, Respondent admitted to using the domain name in this way. See Compl., at Attached Ex. H. Prior panels have declined to grant a respondent rights under Policy ¶¶ 4(c)(i) and (iii) where a confusingly similar domain name was used to offer complainant’s own goods or services. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). Therefore, the Panel declines to grant Respondent rights or legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues that Respondent has engaged in bad faith registration and use. 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 also contends that in light of the fame and notoriety of its BLOOMBERG mark, it is inconceivable that Respondent could have registered the <rusbloomberg.com> domain name without actual knowledge of Complainant's rights in the mark. Further, Complainant notes that its registrations for the BLOOMBERG mark existed well before registration of the domain name now in dispute. Compare Compl., at Attached Ex. A-B (listing Complainant’s trademark registrations both in the United States as well as internationally), with Compl., at Attached Ex. E (showing the registration date of the <rusbloomberg.com> domain name as Aug. 7, 2015). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rusbloomberg.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: 11/5/15
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