Bloomberg Finance L.P. v. sharoon arshad / websitebana.com
Claim Number: FA1704001728679
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York. Respondent is sharoon arshad / websitebana.com (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergstock.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 25, 2017; the Forum received payment on April 25, 2017.
On April 26, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bloombergstock.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 April 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@bloombergstock.com. Also on April 28, 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in the mark based upon registration with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 2,736,744, registered on July 15, 2003).
Respondent’s <bloombergstock.com> is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds only the generic or descriptive word “stock” along with the generic top-level domain (“gTLD”) “.com.”.
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and complainant has not granted Respondent permission or license to use the BLOOMBERG mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the at-issue domain name in order to trade upon Complainant’s global reputation.
Respondent has registered and used the disputed domain name in bad faith. Respondent must have had actual and/or constructive notice of Complainant’s mark before registering the domain name.
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 name subsequent to Complainant’s acquisition of rights in the BLOOMBERG mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name in order to trade upon Complainant’s reputation.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through its registration of such 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 name contains Complainant’s entire BLOOMBERG trademark with generic term “stock” appended, followed by the top-level domain name “.com”. The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <bloombergstock.com> domain name is 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.); see also, Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
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 the 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) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the <bloombergstock.com> domain name lists “Sharoon Arshad” as its registrant. There is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain and Respondent makes no claim that it is known by the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <bloombergstock.com> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
As discussed below regarding Respondent’s registration and use of the domain name in bad faith, Respondent uses the confusingly similar domain name to trade on Complainant’s reputation. Using the confusingly similar <bloombergstock.com> domain name in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Bloomberg L.P v. Bloomberg Realty (India) Private Limited, FA 1204001439263 (Forum May 30, 2012) . (“Use of a domain name which intentionally trade on the fame of another cannot constitute a bona fide offering of goods and services”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from exploiting the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any claims that fit neatly within one of the specific situations enumerated under Policy ¶ 4(b), the Panel may, and does, nevertheless consider Respondent’s bad faith found outside the nonexclusive confines of paragraph 4(b).
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 mark before registering the at-issue domain name. The combination of Complainant’s well known mark with the suggestive term “stock” in Respondent’s domain makes the Panel’s finding all the more compelling. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark thus indicates that Respondent registered and used the <bloombergstock.com> domain name 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"); see also, Northwest Airlines, Inc. v. Mario Koch, FA 95688, (Forum Oct 27, 2000) ("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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergstock.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 29, 2017
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