Bloomberg L.P. v. Registrant
Claim
Number: FA0502000422272
Complainant is Bloomberg L.P. (“Complainant”), represented
by Emily L. Schonbraun, of Willkie Farr & Gallagher LLP, 787 Seventh Avenue, New York, NY 10019. Respondent is Registrant (“Respondent”), P.O. Box 71826, KCPO, China, China, CN
86.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bloombert.com>, registered with Onlinenic,
Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 18, 2005.
On
February 16, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <bloombert.com> is
registered with Onlinenic, Inc. and that Respondent is the current registrant
of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic,
Inc. 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
February 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting a
deadline of March 16, 2005 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@bloombert.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 21, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <bloombert.com>
domain name is confusingly similar to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or
legitimate interests in the <bloombert.com> domain name.
3. Respondent registered and used the <bloombert.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Mr. Michael R.
Bloomberg, currently Mayor of New York City, founded Bloomberg L.P. in
1981. Bloomberg L.P. is an information
services, news and media company, which serves customers in 126 countries
around the world.
Complainant
registered the BLOOMBERG mark with the U.S. Patent and Trademark Office (“PTO”)
on March 18, 1997 (Reg. No. 2,045,947) in connection with a variety of goods
and services, including “personal computing applications in the areas of news,
business, finance . . . and professional books in the fields of news, business,
finance.” The mark is also used for
“financial services in the nature of providing a securities trading system.”
Complainant
also owns the domain name registrations for a variety of domain names including
<bloomberg.com> (Reg. Sept. 29, 1993), <bloomberg.net> (Reg. Mar.
8, 1997), and <bloomberg.info> (Reg. July 31, 2001), among others.
Respondent
registered the <bloombert.com> domain name on November 20,
2002. The domain name resolves to a
search engine website that contains links to financial and news websites.
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 has
established a presumption of rights in the BLOOMBERG mark as the result of its
registration of the mark on the Principal Register of the U.S. Patent and
Trademark Office. Respondent has not
challenged the presumption. Therefore,
Complainant has established rights in the BLOOMBERG mark pursuant to Policy ¶
4(a)(i). See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that the
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. See also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark.
The difference
between the <bloombert.com> domain name and Complainant’s
BLOOMBERG mark is simply Respondent’s substitution of the letter “g” in
Complainant’s mark with the letter “t” in the domain name. Past panels have held that domain names are
confusingly similar to Complainant’s BLOOMBERG mark when they contain the mark
in its entirety, but simply substitute a single letter in the domain name. Consistent with these prior decisions, the
Panel finds the <bloombert.com> domain name confusingly similar to
Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i). See
Bloomberg L.P. v. Hebat Interactive, FA 96762 (Nat. Arb. Forum
Apr. 20, 2001) (“The <bloomberk.com> domain name is a misspelling of
Complainant’s <bloomberg.com> and BLOOMBERG marks. The replacement of the
letter "g" in Complainant’s mark with the letter "k" in
Respondent’s domain name does not take the Respondent’s registration of the
domain name out of the realm of Policy 4(a)(i).”); see also Bloomberg L.P. v. Future Movie Name, FA 139664 (Nat. Arb. Forum Feb. 8, 2003) finding
the <bloonberg.com> domain name confusingly similar to Complainant’s
BLOOMBERG mark.
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the <bloombert.com>
domain name. The burden falls on
Respondent to advance concrete evidence to rebut Complainant’s assertion
pursuant to Policy ¶ 4(a)(ii) because this information is “uniquely within the
knowledge and control of the respondent.”
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002). In this case, Respondent has
left Complainant’s assertion unchallenged.
Therefore, the Panel construes this omission as an implicit admission
that Respondent lacks rights and legitimate interests in the disputed domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names; see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) finding no rights or legitimate interests where
Respondent fails to respond.
Additionally,
when a respondent defaults, panels are free to “draw such inferences therefrom
as it considers appropriate.” UDRP Rule
14(b). Panels have further developed
this principle to a point where panels now accept the reasonable allegations
set forth in complaints, unless such allegations are clearly contradicted by
the evidence.
See Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) finding that the failure to challenge a
complainant’s allegations allows a panel to accept all of the complainant’s
reasonable allegations and inferences as true; see also 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.
In conjunction
with the above, typosquatting has been defined as “the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors.” See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003). Complainant has asserted that Respondent’s
intention in registering and using the <bloombert.com> domain name
was simply to divert Internet users, who happen to misspell Complainant’s
<bloomberg.com> domain name, to Respondent’s resolved website. Such typosquatting is not evidence of a bona
fide offering of goods or services, or legitimate noncommercial or fair use
pursuant to Policy ¶¶ 4(c)(i) and (iii).
In the absence of evidence to the contrary, and given the fame
associated with the BLOOMBERG mark, the Panel accepts Complainant’s assertion
as both reasonable and true. See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”); see also IndyMac Bank
F.S.B. v. Ebeyer, FA
175292 (WIPO Sept. 19, 2003) finding that Respondent lacked rights and
legitimate interests in the disputed domain names because it "engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter 'x' instead of the letter
'c.'".
Moreover, there is no evidence or assertion in the record that
would suggest Respondent is commonly known by the <bloombert.com> domain
name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply; see also RMO, Inc.
v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail".
Therefore, Complainant has established Policy ¶ 4(a)(ii).
The
circumstances that are used to evidence bad faith registration and use pursuant
to Policy ¶ 4(a)(iii) are simply illustrative, and are non-exclusive. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation, that shall be evidence of registration and use of a domain
name in bad faith; see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”); see also Educ. Testing Serv. v. TOEFL, D2000-0044
(WIPO Mar. 16, 2000) noting that the Policy “indicates that its listing of bad
faith factors is without limitation”.
Bad faith
registration and use has been found where a domain name registrant registers a
domain name that incorporates a famous trademark because when “an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse.” See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002). In a case similar to the
instant case, a panel found that it was appropriate to assume that a respondent
had notice of Complainant’s BLOOMBERG mark prior to registering a disputed
domain name based on the “well-known and famous nature of Complainant’s
marks.” See Bloomberg L.P. v. Hebat
Interactive, FA 96762 (Nat. Arb. Forum Apr. 20, 2001). Consistent with this prior decision, the
Panel finds that in the absence of evidence to the contrary, Respondent had
notice of Complainant’s BLOOMBERG mark prior to registering the disputed domain
name. Despite Respondent’s knowledge of
Complainant’s rights in the mark, Respondent nevertheless registered the domain
name, which is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14,
2000) finding that the fame of the YAHOO! mark negated any plausible
explanation for Respondent’s registration of the <yahooventures.com>
domain name.
Moreover, as
stated previously, Respondent engaged in the practice of typosquatting, which
is itself evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
Oct. 15, 2003) ("Typosquatting, itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept.
22, 2003) finding that the <dermatalogica.com> domain name was a
typosquatted version of Complainant's DERMALOGICA mark and
stating "[t]yposquatting itself is evidence of bad faith registration
and use pursuant to Policy 4(a)(iii)"; see also K.R. USA, Inc. v. So So Domains, FA
180624 (Nat. Arb. Forum Sept. 18, 2003) finding
that the <philadelphiaenquirer.com> and
<tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting, in which Respondent has engaged, has been deemed behavior in bad
faith."
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bloombert.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
April 4, 2005
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