Bloomberg Finance L.P. v. zhang guo jie
Claim Number: FA1704001727926
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York, USA. Respondent is zhang guo jie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomberg.site>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2017; the Forum received payment on April 20, 2017. The Complaint was received in both Chinese and English.
On April 21, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <bloomberg.site> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 May 2, 2017, the Forum served the Chinese Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@bloomberg.site. Also on May 2, 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 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Therefore, the Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and rules and principles of law that the Panel deemed applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in BLOOMBERG and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant failed in its claim earlier this year under the Uniform Rapid Suspension System (“URS”) to have the disputed domain name suspended.
2. Complainant uses the trademark BLOOMBERG in relation to its services which it describes as electronic trading, financial news and information businesses;
3. the disputed domain name was created on October 14, 2015;
4. the domain name does not resolve to an active website and there is no evidence that it has done so at any time in the past; and
5. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
Under that part of the Complaint entitled “Other Legal Proceedings” Complainant has stated that on March 15, 2017 Complainant filed a URS complainant against Respondent in respect of the disputed domain name seeking suspension of the domain name for the duration of the registration. On March 31, 2017 the URS Examiner denied the URS complaint (“the URS Decision”)[i]. Complainant submits that the URS Decision was made in error and that the “error should be rectified by this UDRP proceeding.”
The Panel notes that the UDRP does not provide for appeals from the URS Decision. To the extent that the URS Decision has any bearing on these Administrative Proceedings the issues have been considered later under the heading of “Registration and Use 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.”
Importantly, 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.
The Panel notes that Complainant has made no submissions in relation to the requirement that it prove the domain name is being used in bad faith. For that reason the Complaint might be denied without further analysis. However, the Panel has in its discretion gone on to review all of the evidence as presented before making a decision.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Equally, a complainant may by proof of use and reputation show unregistered or so-called common law rights in a trademark.
Complainant claims both registered and unregistered trademark rights in the name BLOOMBERG.
Complainant states that its registered rights are “based upon” certain Chilean, Czech and South Korean national trademark registrations. The supporting exhibit is poorly presented. The papers are not in English, there is no translation, and for the most part the copies cannot be read clearly. The Panel cannot determine the nature of the rights that might exist.
The Complaint also refers to “Other BLOOMBERG Trademark Registrations”, owned by what is said to be a wholly owned subsidiary of Complainant, Bloomberg Finance One L.P. The supporting exhibit is a summary schedule of international registrations for BLOOMBERG and BLOOMBERG-composite marks. There listed, for example, is United States Patent and Trademark Office (“USPTO”) Reg. No. 2,736,744, registered July 15, 2003 for the word mark BLOOMBERG.
The schedule itself is inadequate proof of registered trademark rights. There is no copy of the USPTO registration certificate. The Panel has nonetheless made the effort to locate that record on the USPTO database and finds that the trademark is registered and in force.[iii]
The registered owner, Bloomberg Finance One L.P., shares the same New York address as Complainant and so, in the absence of any dispute to entitlement, the Panel is prepared to accept Complainant’s assertion that the trademark is owned by a group company. Accordingly, the Panel finds that Complainant has trademark rights in BLOOMBERG.
Complainant submits that the domain name is confusingly similar to the trademark. Panel need not consider that submission since countless decisions under this Policy have found that a domain name is identical to a trademark where the domain name merely adds a TLD extension to that trademark. Since that is the case here the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information identifies “zhang guo jie” as the registrant and so there is no evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent might hold relevant trademark rights. The domain name is not in use and so there is no indication that Respondent is making either a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’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 the respondent’s website or location or of a product or service on the site or location.’
Complainant does not rely on any of those four scenarios nor, as already stated, did it make any submissions concerning the requirement of use in bad faith.
So far as registration in bad faith is concerned, Complainant contends that because of the notoriety of Complainant’s trademark it is inconceivable that Respondent could have registered the domain name without actual or constructive knowledge of Complainant’s trademark rights.
The Panel notes that UDRP panelists have on the whole required actual knowledge of a complainant’s rights; constructive notice is not enough.[v] The Panel need not decide the proper question - whether in consequence of Complainant’s use of the trademark, it is more likely than not that Respondent was aware of Complainant’s trademark and targeted it - since the Panel finds that there is no proof of use in bad faith.
Despite the absence of submissions regarding bad faith use, the Panel is entitled to draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Those inferences must be reasonable based on what is set forth in the Complaint.[vi]
On October 15, 2015 Complainant sent Respondent a letter of demand. Respondent did not reply. A copy of the demand letter is exhibited to the Complaint. The letter does not suggest that the domain name was then in use (note that the name was only registered one day earlier) and the claim of trademark infringement made in the letter is questionable. The Panel takes the view that nothing need be read into Respondent’s failure to reply to that letter at the time and there is no evidence that the matter was pursued by Complainant.
The domain name has now not been used for 18 months, a factor which has gone against some respondents[vii], but there is no evidence that the domain name is or has been for sale and Respondent, when approached, did not attempt to sell the domain name to Complainant.
Further, even taking account of the public use which has been made of the trademark, it is a common family name[viii] which might remain open to use in good faith by any number of traders. A very brief Internet search made by the Panel indicates that to be so in fact. This is not a case of an invented word with no connotation other than the goods or services of a single trader where it is difficult to perceive of any good faith use.[ix] Absent any use or other telling indicia, an inference of likely bad faith use could here only rest on supposition.
So far as the reference to “Other Legal Proceedings” is concerned, the Panel notes that the URS is described as “a rights protection mechanism that complements the existing Uniform Domain-Name Dispute Resolution Policy (UDRP) by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement.”[x] (emphasis added).
Paragraph 8.6 of the URS Rules of Procedure states that “if the Examiner finds that [the] standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favor of the Complainant. If the Examiner finds that …the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.
The Examiner in the URS Decision wrote:
“The Complaint is …devoid of any allegations or proof of facts tending to show, even prima facie, … that the domain name was… being used by Respondent in bad faith.”
As such, the Examiner made the only decision open to him since he was not presented with any evidence or submissions of use in bad faith and under the URS he was obliged to apply a standard of “clear and convincing evidence”.[xi]
Complainant’s suggestion that the URS Decision is inconsistent with decisions made by the same Examiner at the same time involving Complainant’s same trademark ignores the fact that in both of those other URS cases there was evidence of bad faith use of the domain names. In one case the respondent demanded money in exchange for the at-issue domain name. In both cases the at-issue domain names resolved to webpages carrying third party advertising.[xii]
The references under “Other Legal Proceedings” only show that Complainant, having failed with its URS complaint, took nothing from the experience and again did not present argument concerning bad faith use in these proceedings. The Panel finds that Complainant has not met even the lower burden of proof of bad faith use under the UDRP. Accordingly, the Panel finds the third limb of the Policy not been established.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bloomberg.site> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
June 8, 2017
[i] See Bloomberg L.P. v zhang guo jie, Claim No. FA1703001721683.
[ii] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[iii] See http://tess2.uspto.gov/bin/showfield?f=doc&state=4806:lp3wlk.2.13.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[v] 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.”).
[vi] 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.”).
[vii] See Caravan Club v. Mrgsale, FA 95314 (FORUM Aug. 30, 2000)
[viii] See Dictionary of American Family Names ©2013, Oxford University Press : Jewish (American): partly Americanized ornamental name, a compound meaning ‘flower hill’ (from Yiddish blum ‘flower’ or German Blume + German Berg ‘mountain’, ‘hill’).
[ix] See Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case D2000-0003.
[x] See https://www.icann.org/resources/pages/urs-2014-01-09-en.
[xi] URS Procedure 1.2.6.
[xii] See, Bloomberg Finance LP v Domains by Proxy, LLC. et al., Claim No. FA1703001721826 concerning <bloomberg.family>; see also Bloomberg Finance LP v, Chen Yu et al., Claim No. FA1703001721805 concerning <bloomberg.store>.
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