Bloomberg L.P. v. Herrington Hart, NIRT
c/o Michael Herrington
Claim
Number: FA0504000464790
Complainant Bloomberg L.P. (“Complainant”), is
represented by Emily Luskin Schonbraun, of Willkie Farr & Gallagher LLP, 787 Seventh Avenue, New York, NY 10019. Respondent is Herrington Hart, NIRT c/o Michael Herrington (“Respondent”),
P.O. Box 94105, San Francisco, CA 94105.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <news-bloomberg.com>, registered with Enom,
Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 21, 2005.
On
April 21, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <news-bloomberg.com> is registered with
Enom, Inc. and that Respondent is the current registrant of the name Enom, Inc.
has verified that Respondent is bound by the Enom, 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
April 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 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@news-bloomberg.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
May 18, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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 <news-bloomberg.com>
domain name is confusingly similar to Complainant’s BLOOMBERG mark.
2. Respondent does not have any rights or
legitimate interests in the <news-bloomberg.com> domain name.
3. Respondent registered and used the <news-bloomberg.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Bloomberg, L.P., has become one of the largest providers of worldwide financial
news and information since its inception in 1981. Complainant is recognized and trusted worldwide as a leading
financial information and analysis source.
Complainant is headquartered in New York, serves clients in over 125
countries and employs 1600 reporters in 94 news bureaus worldwide.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the BLOOMBERG (Reg. No. 2,045,947 issued March 18, 1997) and
BLOOMBERG NEWS (Reg. No. 2,266,559 issued August 3, 1999) marks. Complainant has continuously used these
marks in commerce as a part of a family of at least thirty-two trademarks and
service marks containing the BLOOMBERG mark.
Complainant has also obtained registrations for marks containing the
BLOOMBERG mark in at least ninety-five countries around the world.
Complainant is
also the registered owner of domain names incorporating the BLOOMBERG mark such
as <bloomberg.com>, <bloomberg.net>, <bloomberg.org>,
<bloomberg.info>,
<bloombergnews.com>, <bloombergnews.org>, <bloombergnews.info>
and over 1000 other domain names incorporating the BLOOMBERG mark, including
many defensive registrations of marks spelling BLOOMBERG incorrectly.
Respondent
registered the <news-bloomberg.com> domain name on March 22,
2005. Respondent has used the disputed
domain name to redirect Internet users to different websites, including a
webpage containing nothing but the line “welcome to the future home of
news-bloomberg.com.” Since April 4,
2005, Respondent has redirected Internet users to the “Fed Watch’ webpage of
Complainant’s <bloomberg.com> domain.
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 that it has rights in the BLOOMBERG and BLOOMBERG NEWS marks
through registration with the United States Patent and Trademark Office and
through continued use of the marks in commerce for the last twenty
four-years. 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 <news-bloomberg.com>
domain name registered by Respondent is confusingly similar to Complainant’s
BLOOMBERG and BLOOMBERG NEWS marks because differences such as the addition of
a hyphen in the domain name and the transposed words “bloomberg” and “news” are
insufficient to differentiate the domain name from the marks. The Panel finds that the use of transposed
words, similar to transposed letters does not suffice to differentiate the
disputed domain name from Complainant’s mark to create a separate and distinct
mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb.
Forum Apr. 24, 2000) (finding that punctuation is not significant in
determining the similarity of a domain name and mark); see also InfoSpace.com, Inc. v. Ofer, D2000-0075
(WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is
identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and
.com are not distinguishing features”); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145
(eResolution May 3, 2000) (finding that a hyphen between words of Complainant’s
registered mark is confusingly similar); see also Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding
that placing a hyphen in domain name between “General” and “Electric” is
confusingly similar to Complainant’s mark); see also Google Inc. v. Jon G., FA 106084
(Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly
similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of
two letters does not create a distinct mark capable of overcoming a claim of
confusing similarity, as the result reflects a very probable typographical
error”); see also Toronto Convention & Visitors Ass’n v.
This Domain is For Sale, D2001-1463 (WIPO Feb. 25, 2002) (finding that
there would be no reason to distinguish between <tourism-toronto.com> and
TORONTO TOURISM); see also NCRAS Mgmt., LP v. Cupcake City, D2000-1803
(WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com>
confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely
inverting the terms of a mark . . .is quite insufficient to dispel consumer
confusion; the mark and the resulting domain name are simply too similar to
each other”).
Moreover,
the addition of the generic top-level domain “.com,” is irrelevant in
determining whether the disputed domain name is confusingly similar to
Complainant’s BLOOMBERG and BLOOMBERG NEWS marks. See Pomellato S.p.A
v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also 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
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb.
11, 2002) (“Internet users searching for a company’s Web site often assume, as
a rule of thumb, that the domain name of a particular company will be the
company name or trademark followed by ‘.com.’”); see also Sporty's Farm L.L.C. vs. Sportsman's Mkt.,
Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S.
1262 (2000), ("For consumers to buy things or gather information on the
Internet, they need an easy way to find particular companies or brand names.
The most common method of locating an unknown domain name is simply to type in
the company name or logo with the suffix .com"); see also Interstellar Starship Services Ltd. v. EPIX,
Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the
same mark" as EPIX).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed domain
name. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has
no rights or legitimate interests with respect to the domain name it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
rights or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do exist); see also 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).
The Panel
accepts all reasonable allegations and inferences in the Complaint as true
because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of the Complaint to be deemed 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).
Respondent has
used the disputed domain name to redirect Internet users to various websites,
including the “Fed Watch’ webpage of Complainant’s <bloomberg.com> domain
name. Complainant contends that
Respondent is attempting to associate the disputed domain name with Complainant
by linking to Complainant’s website.
The Panel finds Respondent has not established a use in connection with
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”); see
also American Int’l Group, Inc. v. Walter Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant
online, through wholesale copying of Complainant’s website, Respondent had no
rights or legitimate interests in the disputed domain name).
Complainant has
not licensed or otherwise permitted Respondent to use Complainant’s marks on
any of Complainant’s family of marks, nor has Complainant licensed or otherwise
permitted Respondent to apply for or use any domain name incorporating those
marks. Moreover, Complainant has
asserted that Respondent is not commonly known by the <news-bloomberg.com> domain name pursuant to
paragraph 4(c)(ii) of the Policy.
Nothing in the record clearly contradicts this assertion. Thus the Panel finds Respondent did not
establish rights or legitimate interests in the disputed domain name under this
element. See 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); 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").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Moreover, because Complainant has established a famous and
substantial reputation for its BLOOMBERG and BLOOMBERG NEWS marks, consumers
are likely to associate the use of these marks with Complainant’s business and
various financial services.
Respondent’s use of the <news-bloomberg.com>
domain
name to redirect Internet users to Complainant’s website alludes to an obvious
connection between Respondent and Complainant’s famous marks since it
incorporates Complainant’s marks in their entirety. Therefore, the Panel finds evidence that Respondent registered
the disputed domain name in bad faith. See
Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where Respondent made no use of the domain name in question
and there are no other indications that Respondent could have registered and
used the domain name in question for any non-infringing purpose); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]hile an intent to confuse consumers is not
required for a finding of trademark infringement, intent to deceive is strong
evidence of a likelihood of confusion"); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website)
Furthermore, Respondent registered the <news-bloomberg.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the BLOOMBERG and BLOOMBERG NEWS marks due to Complainant’s registration of the
mark with the USPTO. Registration of a domain name that is
confusingly similar to a mark despite actual or constructive knowledge of
another’s rights in the mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <news-bloomberg.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
June 1, 2005
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