DECISION

 

Bloomberg Finance L.P. v. Private Whois / Knock Knock WHOIS Not There, LLC

Claim Number: FA1709001751564

 

PARTIES

Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Amin Kassam of Bloomberg L.P., New York, USA.  Respondent is Private Whois / Knock Knock WHOIS Not There, LLC (“Respondent”), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bloombergbusinessweekasia.com>, registered with Automattic Inc.

 

PANEL

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 Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 29, 2017; the Forum received payment on September 29, 2017.

 

On October 2, 2017, Automattic Inc. confirmed by e-mail to the Forum that the <bloombergbusinessweekasia.com> domain name is registered with Automattic Inc. and that Respondent is the current registrant of the name.  Automattic Inc. has verified that Respondent is bound by the Automattic Inc. 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 October 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@bloombergbusinessweekasia.com.  Also on October 4, 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 October 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.     Complainant has rights in the BLOOMBERG mark based upon registration with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744, registered July 15, 2003). See Compl., Attached Ex. B. Complainant also has rights in the BUSINESS WEEK mark pursuant to a trademark assignment. See Compl., Attached Ex. F (demonstrating USPTO registrations of the mark, coupled with assignment agreement  naming Complainant as assignee). Respondent’s <bloombergbusinessweekasia.com> is identical or confusingly similar to Complainant’s BLOOMBERG and BUSINESS WEEK marks as it contains the marks completely (without spacing), only adding the geographic term “Asia” and the generic top-level domain (“gTLD”) “.com.”

2.    Respondent does not have rights or legitimate interests in <bloombergbusinessweekasia.com>. 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 disputed domain name to provide advertising links to third-party websites. See Compl., Attached Ex. I.

 

3.    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

1.    Respondent did not submit a Response

 

FINDINGS

1.    Respondent’s <bloombergbusinessweekasia.com> domain name is confusingly similar to Complainant’s BLOOMBERG and BUSINESS WEEK marks.

2.    Respondent does not have any rights or legitimate interests in the

<bloombergbusinessweekasia.com> domain name.

3.    Respondent registered or used the <bloombergbusinessweekasia.com> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant, Bloomberg Finance L.P. is a financial software, data, and media company. In connection with this business Complainant uses the BLOOMBERG and BUSINESSWEEK marks to provide and market services. Complainant claims rights in the marks based upon its registration with the USPTO (BLOOMBERG—Reg. No. 2,736,744, registered July 15, 2003; BUSINESS WEEK—Reg. No. 549,742, registered Oct. 23, 1951). Registration of a mark with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Further, while Complainant notes an assignment of the BUSINESS WEEK mark by the mark’s previous registrant (see Compl., Attached Ex. F), the Panel agrees that such an assignment confers rights. See Golden Door Properties, LLC v. Golden Beauty / goldendoorsalon, FA 1668748 (Forum May 7, 2016) (finding rights in the GOLDEN DOOR mark where Complainant provided evidence of assignment of the mark, naming Complainant as assignee). Therefore, the Panel finds Complainant has rights in the BLOOMBERG and BUSINESS WEEK marks per Policy ¶ 4(a)(i).

 

Complainant next claims that Respondent’s <bloombergbusinessweekasia.com> is identical or confusingly similar to Complainant’s BLOOMBERG and BUSINESS WEEK marks as it contains the marks completely (without spacing), only adding the geographic term “Asia” and the gTLD “.com.” The combination of marks may also lead to finding a domain name is confusingly similar. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”). Eliminating spacing, adding “.com,” and including a geographic term represent nondistinguishing changes. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.  Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). In light of available precedent, the Panel concludes Respondent’s <bloombergbusinessweekasia.com> is identical or confusingly similar to Complainant’s BLOOMBERG and BUSINESS WEEK marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in the <bloombergbusinessweedesign.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BLOOMBERG and BUSINESSWEEK marks in any way. Where a response is lacking, WHOS information can support a finding that respondent is not commonly known by the disputed domain name. 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.). The WHOIS information of record identifies Respondent as “Private Whois / Knock Knock WHOIS Not There, LLC.” The Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.

 

Complainant asserts “Respondent has no legitimate interest and no basis to claim non-commercial fair use of Complainant’s BLOOMBERG mark.” General attempts to trade on the reputation of a complainant may not indicate a respondent’s rights or legitimate interests. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy

¶ 4(c)(iii).”). Complainant notes Respondent causes the resolving website to display the BLOOMBERG and BUSINESS WEEK marks prominently, and includes an article titled “Sumitomo Gunma Holdings says ‘Yen inches lower as GDP data disappoints.’” Compl., Attached Ex. I. The Panel agrees with Complainant that Respondent registered the domain name for the purpose of causing confusion and to divert Internet users—as in Ripple Labs Inc. above—failing to establish any rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

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 and exploit 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 arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).  The Panel determines that such actions constitute an abusive registration of the subject domain name in circumstances in which Respondent seeks to profit from and exploit Complainant’s trademark, and that this constitutes registration and use in bad faith.

 

Finally, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, the Panel disregards arguments of bad faith based on constructive notice as 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 find that actual knowledge does adequately evince 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 contends that Respondent must have had actual knowledge of the BLOOMBERG and BUSINESSWEEK marks and business because of the Complainant’s strong reputation and a high-profile presence in the financial and media sectors, and is the subject of substantial consumer recognition and goodwill. Coupled with the registration of the disputed domain names using the descriptive term Respondent chose to incorporate, the Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

 

Accordingly, it is Ordered that the <bloombergbusinessweekasia.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  November 8, 2017