Bloomberg Finance L.P. v. M. Malik
Claim Number: FA1804001782844
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is M. Malik (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tictocbybloomberg.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2018; the Forum received payment on April 20, 2018.
On April 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tictocbybloomberg.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2018 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@tictocbybloomberg.com. Also on April 24, 2018, 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. However, Respondent did sent two e-mails to the Forum, see below.
On May 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that, since the inception of its business in 1981, and the adoption of the “Bloomberg” name in 1987, it has become one of the largest providers of global financial news and data and related goods and services and is recognized and trusted worldwide as a leading source of financial information and analysis. Complainant’s substantial advertising and promotion of its marks have created significant goodwill and consumer recognition around the world. One of the many products and services offered by Bloomberg is the BLOOMBERG TERMINAL (the “TERMINAL”), which provides access to news, analytics, communications, charts, liquidity, functionalities, and trading services. There are currently over 320,000 TERMINAL subscribers worldwide. Bloomberg is headquartered in New York City, and employs 19,000 people in 176 locations around the world. Complainant has rights in the BLOOMBERG mark through its trademark registration in the United States in 2003. Moreover, Complainant and its affiliated companies have obtained registrations for marks and continually used marks containing the word BLOOMBERG in over one hundred (100) countries.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark as the entire BLOOMBERG mark is incorporated, plus the generic terms “tic toc by.” The disputed domain name is the same name as Complainant’s product “Tic Toc by Bloomberg,” which launched the same day that Respondent registered the domain name.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not permitted, licensed, or authorized to use Complainant’s BLOOMBERG mark and is not commonly known by the disputed domain name. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use. Instead, the disputed domain name is used to provide advertising links to third-party websites, some of which are related to Complainant’s business.
Further, says Complainant, Respondent registered and has used the domain name in bad faith to divert Internet users. And Respondent was aware of Complainant’s rights in the BLOOMBERG mark when it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. In his e-mails to the Forum Respondent first stated “I have no issue to transfer this domain to Bloomberg”, but subsequently retracted the offer and stated, verbatim:
I have a Query : In the past email I read that Bloomberg is our trademark (according to bloomberg members) ok I agree but I buy tictocbybloomberg.com if you break it then its look like this tictoc-by-bloomberg so its clear I was not buy the bloomberg.com or any other extension like (.co .net .org etc) so its not making any sense of trademark ?
For example : ( all domains are available )
WealthBloomBerg.com
BloomBergEyes.com
BloomBergCurrency.com
bloombergfinacialnews.com
wwwbloombergnews.com
bloombergnews.co
So people are selling and using those domain's you should claim to all and stop all domain's related to bloomberg
because its your trademark if you are not able to do this, so how you claim on tictoc by bloomberg is our trademark ??
Another angle if you closely watch its a three combination words tictoc-by-bloomberg , again I am saying I am not buying Bloomberg.com, Bloomberg.net or Bloomberg.org so how you prove its your trademark ?? simple and straight question .
Complainant has rights in the mark BLOOMBERG dating back to at least 2003. The mark is very well known.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that contains advertising links to third-party websites, some of which are related to Complainant’s business. The disputed domain name was registered the same day that Complainant launched its “Tic Toc by Bloomberg” product.
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 disputed domain name is confusingly similar to Complainant’s mark as it incorporates the BLOOMBERG mark entirely, and adds the generic terms “tic toc by” into the domain name. Such additions to a domain name do not usually distinguish a domain name from a finding of confusing similarity under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Respondent is not permitted, licensed, or authorized to use Complainant’s BLOOMBERG mark. The WHOIS information does not show Respondent is commonly known by the disputed domain name. Such circumstances can indicate a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Here, the relevant WHOIS information identifies Respondent as “Muhammad Malik.” Accordingly, the Panel finds Respondent is not commonly known by the disputed domain name.
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to provide advertising links to third-party websites. Such use is not typically accepted as a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Consequently, the Panel finds that Respondent’s use of the domain name does not indicate Respondent has rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii). Further, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel may look beyond ¶ 4(b) to the totality of the circumstances when analyzing bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (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).
Respondent has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, Respondent was aware of Complainant’s rights in the BLOOMBERG mark prior to registering the disputed domain name: the disputed domain name is the same name as Complainant’s product “Tic Toc by Bloomberg,” which launched the same day that Respondent registered the domain name. While constructive knowledge is insufficient to support a finding of bad faith, actual knowledge is sufficient for a finding of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Respondent was aware of Complainant’s rights in the BLOOMBERG mark prior to registering the disputed domain name, and it finds that the disputed domain name was registered in bad faith.
Further, the timing of Respondent’s registration of the disputed domain name indicates that the domain name was registered opportunistically in bad faith. Opportunistic bad faith can be found where a respondent registers a domain name in order to take advantage of events surrounding Complainant’s mark. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website); see also Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)). Accordingly, the Panel finds that Respondent registered and used the domain name opportunistically in bad faith.
Finally, Respondent has used the disputed domain name to attract internet users for commercial gain through using a confusingly similar domain name to resolve to a website offering various sponsored listings. As stated above, Respondent’s domain name resolves to a website hosting various sponsored listings and links related to Complainant’s business from which Respondent presumably commercially benefits. Panels have found a respondent to have acted in bad faith under Policy ¶ 4(b)(iv) where a respondent used a domain confusingly similar to another’s mark to profit from commercial links. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Bad faith has been found even where a respondent has commercially benefited through links unrelated to a complainant’s mark. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Accordingly, the Panel finds that Respondent has used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tictocbybloomberg.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 16, 2018
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