Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services
Claim Number: FA1701001714157
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergaiq.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically January 25, 2017; the Forum received payment January 25, 2017.
On January 26, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloombergaiq.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2017, 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@bloombergaiq.com. Also on January 26, 2017, 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 February 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 Allegations in this Proceeding:
Complainant registered the BLOOMBERG mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003). See Compl., at Attached Ex. B. Complainant additionally registered the BLOOMBERG mark with other governments, including Chile (e.g., Reg. No. 785,615, registered Jan. 10, 2007), the Czech Republic (e.g., Reg. No. 257,639, registered Nov. 5, 2003) and South Korea (e.g., Reg. No. 113,526, registered Aug. 7, 2005). See Compl., at Attached Ex. A. Respondent’s <bloombergaiq.com> mark is confusingly similar as it fully incorporates the BLOOMBERG mark and only differs by adding the letters “aiq” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <bloombergaiq.com>. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s marks or to use a domain name with the marks. No evidence even suggests that the Respondent listed in the WHOIS information is commonly known by the BLOOMBERG mark. The domain name does not point to a functioning website, thus no bona fide offering of goods or services is shown and no legitimate noncommercial or fair use is evident.
Respondent registered and is using and/or passively holding the <bloombergaiq.com> domain in bad faith. Respondent must have had actual knowledge of Complainant’s marks, as Complainant has a strong reputation, a high-profile presence in the financial and media sectors, is the subject of substantial consumer recognition and goodwill, and has continuously used the domain name <bloomberg.com> since 1993.
B. Respondent’s Allegations in Response:
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent registered <bloombergaiq.com> November 24, 2016.
Complainant established rights and legitimate interests in the disputed domain name and its protected mark, which is contained within the disputed domain name in its entirety.
Respondent has no such rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark without permission or right.
Respondent registered and used and/or passively held the disputed 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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant is a large financial corporation that conducts business all around the world. Complainant has been using the BLOOMBERG mark in connection with a wide range of financial services, including electronic trading, financial news, and information businesses. Complainant registered the BLOOMBERG (e.g., Reg. No. 2,736,744, registered July 15, 2003) mark with the USPTO. See Compl., at Attached Ex. B. Complainant registered the BLOOMBERG mark with other governments, including Chile, the Czech Republic, and South Korea. See Compl., at Attached Ex. A. Registration of a mark with multiple governmental agencies sufficiently establishes a registrant’s rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel finds that Complainant established rights in the BLOOMBERG mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bloombergaiq.com> is confusingly similar and differs from Complainant’s protected mark only by addition of three letters at the end, followed by the gTLD “.com”. Adding letters to the end of a fully incorporated mark does not distinguish a disputed domain name. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Similarly, adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark, pursuant to ICANN Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar disputed domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 contends that Respondent has no rights or legitimate interests in <bloombergaiq.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services” as the registrant. See Compl., at Attached Exhibit E. Complainant argues that no evidence shows that Respondent has ever been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the BLOOMBERG mark. These assertions support findings that Respondent has no rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel finds that Respondent is not commonly known by <bloombergaiq.com> under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name directs users to a non-functioning webpage. See Compl. at Attached Exhibit G. Passive holding demonstrates lack of a bona fide offering of goods or services. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The disputed domain name appears to offer the user an opportunity to purchase the domain name, and seems to be a GoDaddy auction page. Complainant claims that the site does not function. The Panel finds that Respondent’s actions do not show a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant does not make any contentions that 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 by ancillary allegations considered 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).
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). 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 does support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). Complainant bases its contention on Complainant’s strong reputation and high-profile presence in the financial and media sectors; its substantial recognition and goodwill; and its continuous use and ownership of the <bloomberg.com> domain name since 1993. The Panel finds further that this evidence plus Respondent’s use of Complainant’s actual protected mark in a disputed domain name without right or permission supports findings that Respondent had actual knowledge of Complainant’s mark and exclusive rights at the time Respondent registered and passively held the disputed domain name while offering it for sale.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held a disputed domain name containing in its entirety Complainant’s protected mark and did so in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergaiq.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 8, 2017
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