Bloomberg L.P. v. SC Media Services and
Information SRL c/o Alexandru Lazescu
Claim
Number: FA0407000296583
Complainant is Bloomberg L.P. (“Complainant”),
represented by Allison Villafane, of Willkie Farr & Gallagher LLP, 787 Seventh Avenue, New York, NY 10019. Respondent is SC Media Services and Information SRL c/o Alexandru Lazescu
(“Respondent”), Codrescu 7C, bl.B3, sc.A, ap.5, Iasi,
Romania.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bloomberg.ro>, registered with Romanian
National Computer Network, Research Institute for Informatics.
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.
Honorable
Paul A Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 15, 2004; the Forum received a hard copy of the
Complaint on July 19, 2004.
On
July 16, 2004, Romanian National Computer Network, Research Institute for
Informatics confirmed by e-mail to the Forum that the domain name <bloomberg.ro>
is registered with Romanian National Computer Network, Research Institute for
Informatics and that Respondent is the current registrant of the name. Romanian
National Computer Network, Research Institute for Informatics has verified that
Respondent is bound by the Romanian National Computer Network, Research
Institute for Informatics registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
July 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 12, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@bloomberg.ro by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 19, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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."
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 makes the following assertions:
1. Respondent’s <bloomberg.ro>
domain name is identical to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or
legitimate interests in the <bloomberg.ro> domain name.
3. Respondent registered and used the <bloomberg.ro>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bloomberg, L.P., a Delaware company that has been in business since 1981, is
one of the largest providers of worldwide financial news and information, and
related goods and services. Complainant
serves clients in over 125 countries, and employs 1,600 reporters and 94 news
bureaus worldwide. Since its inception
in 1981, Complainant has continuously used its BLOOMBERG mark in conjunction
with its financial services business.
Complainant holds trademark registrations with the United States Patent
and Trademark Office for the BLOOMBERG mark (Reg. No. 2,045,947, issued May 18,
1997, Reg. No. 2,736,744, issued July 15, 2003). Complainant also registered the BLOOMBERG mark on January 10,
2003 (Reg. No. 54085) in the country of Romania.
Respondent
registered the <bloomberg.ro> domain name on November 18,
1998. Respondent is not using the
domain name in connection with an active website.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant
established in this proceeding that it has rights to the BLOOMBERG mark as
evidenced by its registration with the United States Patent and Trademark
Office (Reg. No. 2,045,947, issued May 18, 1997, Reg. No. 2,736,744, issued July
15, 2003) and its registration in the country of Romania (Reg. No. 54085,
issued January 10, 2003). See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The
domain name registered by Respondent, <bloomberg.ro>, is identical
to Complainant’s BLOOMBERG mark under Policy ¶ 4(a)(i) because the only
difference is the addition of the top-level domain “.ro.” See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO
Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical
to Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the <bloomberg.ro>
domain name. Since Respondent did not
respond to the Complaint, the Panel may accept any reasonable assertions by
Complainant as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Respondent
is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro>
domain name in connection with an active website. The Panel finds that the passive holding of a domain name that is
identical to Complainant’s mark is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273
(WIPO Nov. 13, 2000) (finding no rights or legitimate interests where
Respondent failed to submit a Response to the Complaint and had made no use of
the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that Respondent made preparations to use the domain name or one like it
in connection with a bona fide offering of goods and services before notice of
the domain name dispute, the domain name did not resolve to a website, and
Respondent is not commonly known by the domain name); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <bloomberg.ro> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
While any of the
four circumstances listed at Policy ¶ 4(b) establishes bad faith registration
and use of a domain name, the listed circumstances were not intended to be
exclusive. The Panel may consider the
totality of the circumstances in addressing whether Respondent registered and
used the disputed domain name in bad faith.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be
illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”)
Although
Respondent registered the <bloomberg.ro> domain name in 1998, it
has not used the disputed domain name in connection with the offering of any
services or in conjunction with an active website. The Panel finds that Respondent’s passive holding of the domain
name evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000) (finding that “it is possible, in certain circumstances, for inactivity
by the Respondent to amount to the domain name being used in bad faith”); see
also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent
made no use of the domain name or website that connects with the domain name,
and that passive holding of a domain name permits an inference of registration
and use in bad faith)
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bloomberg.ro> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
September 2, 2004
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