Bloomberg Finance LP v. Privacy Protection Service INC d/b/a PrivacyProtect.org et al.
Claim Number: FA1609001695669
Complainant: Bloomberg Finance LP of New York, New York, United States of America.
Complainant Representative: William M Ried, Bloomberg Finance LP, 731 Lexington Avenue, New York, NY 10022, USA
Respondent: Michael Hoey of Hong Kong, International, S.A.R.
Respondent Representative: Notice of Default has been issued to the Respondent
REGISTRIES and REGISTRARS
Registries: MARKET Registry
Registrars: 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 Examiner in this proceeding.
Mrs.Prathiba M. Singh, as Examiner.
Complainant submitted: September 27, 2016
Commencement: September 28, 2016
Default Date: October 14, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant has annexed a USPTO certificate (Reg. No. 3430,969) (Registered May 20, 2008) for the mark BLOOMBERG. In the Complaint, the Complainant has alleged that the Complainant’s marks are strong and have gained secondary meaning through their continuous use in connection with the Complainant’s electronic trading, financial news and information businesses.
The Complainant’s website http://www.bloomberg.com/ shows that Bloomberg is the global business and financial information and news leader, gives influential decision makers a critical edge by connecting them to a dynamic network of information, people and ideas. Bloomberg L.P., was founded by Michael Bloomberg in 1981 with the help of three other founders. Within 10 years of it’s inception, Bloomberg L.P. had made over 10,000 installations of the Bloomberg Professional service, a groundbreaking data, analytics and information-delivery service.
The website also presents some facts such as:
The Bloomberg Professional Service has 325,000 Subscriptions globally, Bloomberg Business week has 980,000 Global Circulation in 150 Countries, 4,8000 technologists and computer engineers at Technology @ Bloomberg,5,000 stories a day in more than 120 Countries in Bloomberg News and 19,000 Employees in 192 Locations Around the world.
GROUNDS OF COMPLAINT:
The Complainant has made out the following grounds on which the Complainant is entitled to relief (URS Proc. 1.2.6)
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS/.usRS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no legitimate right or interest to the domain name [URS/.usRS 1.2.6.2];
3. [if URS] The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3]
The Complainant pleads that the :
Complainant’s Marks are strong and have gained secondary meaning through their continuous use in connection with Complainant’s electronic trading, financial news, and information businesses. On its face, the Domain Name is
confusingly similar to the BLOOMBERG mark. The Domain Name fully incorporates the BLOOMBERG mark and adds the word “financial” and the extension “.market” in a blatant attempt to garner the goodwill and reputation of the famous BLOOMBERG mark.
The Complainant relies upon Bloomberg L.P. v. Virtuality, NAF Decision 97095,
http://domains.adrforum.com/domains/decisions 97095.htm (with the finding that the <bloombergnow.com> is confusingly similar to the trademark BLOOMBERG, because the addition of the generic word “now” “do[es] not add any distinguishing features to the mark, and does not render the mark any less recognizable”).
The Complainant alleges that it has not licensed or otherwise permitted Respondent to use Complainant’s BLOOMBERG mark or to apply for or use any domain name incorporating the BLOOMBERG mark. There is no evidence to suggest that the Respondent listed on the WHOIS record is commonly known by the name “Bloomberg.”
The Complainant states that since the Respondent’s current and apparently only use of the Domain Name is to redirect users to www.bloomberg.com. As a result, Respondent cannot claim a right or legitimate interest in the Infringing Domain Name based on the notion that it has used the Infringing Domain Name or a
corresponding name in connection with a bona fide offer of goods or services. (See Bloomberg L.P. v. Bloomberg Realty (India) Private Limited, NAF Decision FA1204001439263, http://domains.adrforum.com/domains/decisions/1439263.htm)
(“Use of a domain name which intentionally trade on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”).
The Complainant contends that the Complainant has a strong reputation and a high-profile presence in the financial and media sectors and is the subject of substantial consumer recognition and goodwill. Bloomberg registered the <bloomberg.com> domain name in September,1993 and has used this domain continuously since then. These facts lead to the conclusion that Respondent was aware of Complainant’s Marks before registering the Domain Name. Indeed, arbitrators have routinely found bad faith in circumstances where it is unlikely the registrant would have selected the Domain Name without knowing the reputation of the well-known trademark in question {Northwest Airlines, Inc. v. Mario Koch, NAF Decision 95688,http://www.adrforum.com/domains/decisions/95688.htm (“The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”)}.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
-Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
1.Identical or Confusingly Similar:
As stated hereinbefore, a perusal of the Complainant’s website http://www.bloomberg.com/ shows that the Complainant has been in existence since 1981 and that Michael Bloomberg was one of the founder members. The Name of the Company and the mark registered by it is taken from the names of its founder. The Complainant is a global business and financial information and news leader.
In Marc J Randazza v. Reverend Crystal Cox, Eliot Bernstein Case No. D 2012-1525 WIPO Administrative Panel Decision, it was held that the disputed domain names marcjohnrandazza.com, marcjrandazza.com etc were registered by the Respondent. Each of these incorporated the Complainant’s personal name or surname –all of which were identical to the corresponding one’s of the Complainant’s RANDAZZA marks and certainly denied the Complainant the right to reflect any of those marks in a domain name. The marks were all ordered to be transferred to the Complainant.
The Complainant has annexed a USPTO certificate (Reg. No. 3430, 969 ) (Registered May 20, 2008) for the mark BLOOMBERG. In the Complaint, the Complainant has alleged that the Complainant’s marks are strong and have gained secondary meaning through their continuous use in connection with the Complainant’s electronic trading, financial news and information businesses.
Search on the USPTO site shows that, the trade mark has been registered with the office and that the mark is active in various classes for example in International Class(es): 036 - Primary Class U.S Class(es): 100, 101, 102 such as Financial Services when the first use was as far back as Aug. 31, 1987. From public records, it appears that various marks such as BLOOMBERG LAW INSIGHTS ,inter alia, for finance and banking, securities, BLOOMBERG for Computer peripherals, namely, keyboards, monitors and portable fingerprint image scanners, BLOOMBERG AUSBAND INDEX (for providing a financial index of securities values; providing financial index information and securities values thereof; compiling data for measuring the performance of financial instruments and securities; providing financial indices for financial instruments and securities) have been applied for by the company Bloomberg Finance One.
The Complainant has pleaded that the Complainant’s Marks are strong and have gained a secondary meaning through their continuous use in connection with Complainant’s electronic trading, financial news, and information businesses. On its face, the Domain Name is confusingly similar to the BLOOMBERG mark. The Domain Name fully incorporates the BLOOMBERG mark and adds the word “financial” and the extension “.market” in a blatant attempt to garner the goodwill and reputation of the famous BLOOMBERG mark.
The Complainant relies upon Bloomberg L.P. v. Virtuality, NAF Decision 97095,
http://domains.adrforum.com/domains/decisions 97095.htm (with the finding that the <bloombergnow.com> is confusingly similar to the trademark BLOOMBERG, because the addition of the generic word “now” “do[es] not add any distinguishing features to the mark, and does not render the mark any less recognizable”).
The Respondent has registered the domain name in dispute, bloombergfinancial.market ,thus, wholly incorporating the trademark “BLOOMBERG” of the Complainant, which is found to sufficiently establish identitical/confusing similarity. The fact that the respondent has added the suffix financial.market demonstrates that the Respondent wants to take advantage of the Complainant which was incorporated in 2007 and offered software upgrades on a monthly basis to the Bloomberg Professional service with no on-site maintenance and the company is also a market index provider.
There is, thus, identical and confusing similarity between the Complainant’s mark and the Respondent’s domain name.
2. The Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2]
The Complainant registered the trademark since 2008. The Complainant has stated that the Respondent has not licensed or permitted the Respondent to use the Complainant’s BLOOMBERG mark or to apply for or use any domain name incorporating the BLOOMBERG mark. The Respondent is not commonly known by the Domain name.
The Complainant has stated that the Respondent is not engaged in demonstrable preparations to use the Domain name with a bona fide offering of goods or services.
The Complainant states that the Respondent cannot claim a right or legitimate interest in the infringing domain name based on the notion that it has used the infringing domain name or responding name in connection with a bona fide offer of goods or services.
As the Respondent has defaulted, the Respondent has not proved its rights or legitimate interests in the trademark.
The Complainant has proved that the Respondent has no right or legitimate interests in the domain name.
3.Domain is Registered and Used in Bad Faith:
The Respondent registered the domain name <bloombergfinancial.market>.
URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3. ….
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location.”
The Complainant has pleaded that the Complainant’s mark is strong and has gained secondary meaning. The domain name fully incorporates the BLOOMBERG mark. The mark is confusingly similar to the trade mark BLOOMBERG. The complainant states that it registered the <Bloomberg.com> domain name in September, 1993 and has used this domain name continuously since then. The Complainant relies upon Northwest Airlines Inc v. Mario Koch NAF Decision 95688 (http://www.adrforum.com/domains/decisions/95688.htm the selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith.
As the Respondent has defaulted, the Examiner has based the above findings on the averments made by the Complainant, evidence provided by the Complainant and some facts that are in public knowledge.
The Complainant alleges that the Respondent’s domain name is redirecting to the Complainant’s website. This is evidence of the fact that the Respondent has no other interest in the domain name and if the Respondent continues to own the domain name, the Respondent could control the use of the said domain name. There are myriad possibilities in which the Respondent could misuse the domain name for eg., to redirect to competitors of the Complainant, etc., Thus, the Respondent’s lack of any other legitimate use of the domain name as also the redirecting to the Complainant’s domain name evidences lack of bona fides as also registration in bad faith. The possibilities of the Respondent misusing the domain name in the absence of any legitimate use cannot be ruled out. The Respondent may also misuse the same for monetary gains.
The Complainant has proved that the Domain name has been registered and been used in bad Faith.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<bloombergfinancial.market>
Documents show that the domain name has been placed on URS lock.
Prathiba M. Singh, Examiner
Dated: October 19, 2016
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