Bloomberg Finance L.P. v. Jeffrey Bartel / Hamptons Group
Claim Number: FA1704001726658
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is Jeffrey Bartel / Hamptons Group (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org>, registered with GoDaddy.com, LLC.
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 Forum electronically on April 12, 2017; the Forum received payment on April 12, 2017.
On April 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@bloombergnewswire.com, postmaster@bloombergnewswire.net, postmaster@bloombergnewswire.org. Also on April 17, 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 May 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in or to the BLOOMBERG mark pursuant to its registration of the mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003).
Respondent’s <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org> are confusingly similar to the BLOOMBERG mark because they each incorporate the mark entirely and only add the descriptive phrase or generic term “newswire,” and a generic top level domain (“gTLD”). It is likely that an internet user would mistakenly believe that the websites addressed by such domain names are each affiliated with Complainant.
Complainant has not licensed or permitted Respondent to use Complainant’s marks. There is also no evidence showing that Respondent, as listed on the WHOIS record, is commonly known by the disputed domain names. Additionally, Respondent’s current use of the domain names is to provide advertising links to third-party websites and therefore is precluded from claiming a legitimate interest on the basis of a bona fide offering of goods and services. Finally, there is no reason to believe that Respondent has a legitimate noncommercial fair use for the domain names.
Respondent has registered and used the disputed domain names in bad faith. Respondent registered the domain names with actual and/or constructive knowledge of Complainant and Complainant’s rights in the BLOOMBERG mark. In fact, it is unlikely that the Respondent would have chosen the use of the domain names if it had not of been for the high profile associated with the BLOOMBERG mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO trademark registration for its BLOOMBERG mark.
Respondent registered the at-issue domain names subsequent to Complainant’s acquisition of rights in the BLOOMBERG mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the websites addressed by the at-issue domain names to host unrelated links.
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(f), 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 (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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s at-issue domain names each contain Complainant’s entire BLOOMBERG trademark with the generic terms “news” and “wire” (or simply “newswire”) appended all followed by a top-level domain name -either “.com,” “.net” or “.org.” The slight differences between each of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Further, the use of the term “newswire,” which is suggestive of Complainant’s media related business, in conjunction with Complainant’s mark adds to the confusion between each domain name and the BLOOMBERG trademark. Therefore, the Panel finds that the <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org> domain names are each confusingly similar to Complainant’s BLOOMBERG trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of each at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
WHOIS information for the <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org> domain names lists “Jeffrey Bartel / Hamptons Group” as their registrant and there is no evidence in the record suggesting that Respondent is known by any of the at-issue domain names. Therefore, the Panel concludes that Respondent is not commonly known by either the <bloombergnewswire.com>, <bloombergnewswire.net> or <bloombergnewswire.org> domain name pursuant to Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
The <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org> domain names address GoDaddy parked webpages containing hyperlinks that include: “Your Records are Here,” “Investment Bank Boot-Camp,” and “Buy These 10 Stocks Now”. Such links as well as the other links displayed are unrelated to Complainant. Using the confusingly similar domain names in this manner shows neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of the domain names under Policy ¶4(c)(iii). See generally State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also, Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) as to each at-issue domain name.
As mentioned above regarding rights and interests, each of the at-issue domain names address a GoDaddy parking website containing unrelated hyperlinks. Respondent presumably accumulates referral fees from these links. Therefore the Panel finds that Respondent registered and used the confusingly similar domain names to attract internet users for commercial gain. Such use of the domain names demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Given Complainant’s reputation and high-profile presence in the financial and media sectors, Respondent must have had actual knowledge of Complainant's rights in the BLOOMBERG trademark before registering the at-issue domain names. The combination of Complainant’s well known mark with the suggestive term “newswire” in each of Respondent’s domain names is further indication of Respondent’s prior knowledge of the BLOOMBERG mark. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names to improperly exploit the domain names’ trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org> domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's 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 <bloombergnewswire.com>, <bloombergnewswire.net>, and <bloombergnewswire.org> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 17, 2017
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