Bloomberg L.P. v. Brian Johnston
Claim Number: FA0607000760084
PARTIES
Complainant is Bloomberg L.P. (“Complainant”), represented by Lindsay Silbert, of Willkie Farr & Gallagher LLP, 787 Seventh Avenue, New York, NY 10019. Respondent is Brian Johnston (“Respondent”), 1200 Providence Hwy, Sharon, MA 02067.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloombergfx.net>, <bloombergfx.org>, <bloombergfx.biz>, <thebloombergfx.com> and <bloombergfx.info>, registered with Go Daddy Software, Inc.
PANEL
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.
The Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 27, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 31, 2006.
On July 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <bloombergfx.net>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name.
On September 14, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <bloombergfx.org>, <bloombergfx.biz>, <thebloombergfx.com> and <bloombergfx.info> domain names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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 September 18, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 9, 2006 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@bloombergfx.net, postmaster@bloombergfx.org,
postmaster@bloombergfx.biz, postmaster@thebloombergfx.com and postmaster@bloombergfx.info
by e-mail.
A timely Response was received and determined to be complete on October
10, 2006.
On October 13, 2006, Complainant submitted an Additional Submission. On October 16, 2006, Respondent submitted an
Additional Submission
On October 17, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Respondent’s domain names, <bloombergfx.net>, <bloombergfx.org>, <bloombergfx.biz>, <thebloombergfx.com> and <bloombergfx.info>, are confusingly similar to
Complainant’s BLOOMBERG Mark. The
domain names incorporate the mark BLOOMBERG and add only the “FX” abbreviation
for foreign exchange (and in the case of <thebloombergfx.com>,
the word “the”) in an attempt to garner the goodwill and recognition of the
famous mark BLOOMBERG. Respondent has no rights or legitimate
interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
B. Respondent
In his Response, Respondent, Brian Johnston, states:
I
purchased some domain names that include keywords that are associated with my
industry (Foreign Currency Trading). I
did nothing wrong and did not violate any trademark issues. When I searched key words in the FOREX
(foreign exchange) industry “Bloomberg” was one of them. This has no barring on Bloomberg L.P. and
there was no malicious intent on my part.
I took down any domain name with the word or characters that spell out
Bloomberg in it. I would like to
continue using the domain names with the word Bloomberg in it and feel it will
not and has not violated any trademark issues.
I am also interested in selling some or all domain names that spell
“Bloomberg” for a fair price.
Also
I do NOT compete with Bloomberg L.P. as I match prospects in the forex industry
with a clearing firm. Bloomberg L.P. as
far as I know does not engage in foreign exchange trading and they are not a
registered clearing firm. I simply use
domain names with keywords and “bloombergfx” was a key word that was found on
my search so I bought bloombergfx.net. as far as I know bloombergfx is not a
trademarked name and when you search for bloombergfx.com nothing shows up and
hasn’t since I bought bloombergfx.net.
. .
. .
I
would be interested in buying bloombergfx.com if you know who owns it or I am
interested in selling bloombergfx.net.
C. Additional Submissions
Complainant contends in its additional submission that (1) Respondent
has shown no basis for incorporating Complainant’s famous mark BLOOMBERG into
the domain names, (2) Complainant has undisputed rights to the mark BLOOMBERG,
which is the distinctive portion of
“BloombergFX” and the term “FX” is a descriptive term for “foreign
exchange” which does not distinguish the overall mark from BLOOMBERG, (3)
although Respondent had previously agreed to transfer the domain names to
Complainant, Respondent’s offer now to sell the domain names is evidence of bad
faith, and (4) Bloomberg offers both market data concerning foreign exchange
(‘FX’) trading and platforms on which subscribers can make FX trades.
In the additional submission submitted October 16, 2006, Respondent
challenges statements made by Complainant’s counsel in Complainant’s Additional
Submission.
FINDINGS
1. Complainant, Bloomberg L.P., is a Delaware limited partnership that has been in business continuously since 1981 and has operated under the “Bloomberg” trade name in the United States and around the world since at least 1987. Bloomberg has become one of the largest providers of worldwide financial news and information and related goods and services. In addition, Bloomberg offers both market data concerning foreign exchange (“FX”) trading and platforms on which subscribers can make FX trades. Bloomberg is recognized worldwide as a leading financial information and analysis source. Bloomberg has more than 8500 employees worldwide. Bloomberg is headquartered in New York and serves clients in over 125 countries, and employs more than 2000 professionals in 125 news bureaus worldwide. Bloomberg has a strong reputation, a high profile presence in the financial sector, and is the subject of substantial consumer recognition and goodwill.
2. The Amended Complaint is based upon the trademark and
service mark BLOOMBERG, U.S. Reg. Nos. 2,045,947 and 2,736,744
(“Complainant’s Mark”). In addition,
Complainant has registered on the Principal Register of the United States
Patent and Trademark Office (the “USPTO”), and continually used in commerce, a
family of at least thirty-two (32) trademarks and service
marks containing the word BLOOMBERG.
Complainant also has obtained registrations for marks containing the
word BLOOMBERG in at least ninety-five
(95) countries around the world.
3. Complainant is the owner of the following domain names: <bloomberg.com>, registered September 29, 1993; <bloomberg.net>, registered March 8, 1997; <bloomberg.org>, registered December 18, 1997; <bloomberg.info>, registered July 31, 2001; and <bloomberg.biz>, registered March 27, 2002. In addition, Complainant owns over 1200 other domain names incorporating the word “bloomberg”.
4. Complainant has not licensed or otherwise permitted Respondent to use
Complainant’s marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
5. Respondent has never been commonly known as “Bloomberg” or “Bloomberg FX” and has never acquired trademarks or service marks in any such name.
6. Respondent registered <bloombergfx.net> on March 1, 2005. Respondent registered <thebloombergfx.com> on March 1, 2005 and <bloombergfx.org>, <bloombergfx.biz> and <bloombergfx.info> on March 2, 2005.
7. On July 7, 2006, Complainant sent Respondent a cease and desist letter at the email address and mailing address listed on the domain name WHOIS Information. As of July 6, 2006, the domain name <bloombergfx.net> posted to a Web page containing information apparently related to Respondent’s business, FX Trading, including the text: “Image [sic] a news source as sophisticated as Bloomberg, but tailored to FX.” Since as early as July 15, 2006, and continuing as of the date of the filing of the Complaint, the domain name <bloombergfx.net> posted to a page entitled “Test Page for the Apache Web Server on Red Hat Linux.” Complainant did not receive a response to its July 6, 2006 letter.
8. On July 27, 2006, after filing the initial copy of this Complaint, Complainant received notice from Respondent that Respondent would be willing to transfer the <bloombergfx.net> domain name, along with four additional domain names incorporating the mark BLOOMBERG, namely, <thebloombergfx.com>, <bloombergfx.org>, <bloombergfx.biz> and <bloombergfx.info>. Therefore, on July 31, 2006, Complainant and Respondent filed a Joint Request to Stay the Administrative Proceeding so that the parties could complete the domain name transfers. However, Complainant’s attempts to gain access to the domains were unsuccessful. As a result, Complainant filed an Amended Complaint to include the additional four domain names and simultaneously filed a Request to Remove the Stay of Administrative Proceeding.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 rights
in the BLOOMBERG mark through registration with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,045,947 issued March 18, 1997). See
Intel Corp. v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The disputed domain names are confusingly similar to its BLOOMBERG mark. In addition to affixing a top-level domain, such as “.net,” “.org,” “.biz” or “.info,” each of the <bloombergfx.net>, <bloombergfx.org>, <bloombergfx.biz>, and <bloombergfx.info> domain names contain Complainant’s BLOOMBERG mark in its entirety and add the letters “f” and “x.” The addition of a top-level domain name and the letters “f” and “x” fail to distinguish the disputed domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i) because the mark remains the principle feature of the disputed domain names. See Bank of Am. Corp. v. dix, Inc., FA 161459 (Nat. Arb. Forum July 21, 2003) (finding the <bankamericafx.com> and <bankamerica4x.com> domain names to be confusingly similar to the complainant’s BANKAMERICA mark because “the addition of ‘fx’ and ‘4x’ does not significantly differentiate the domain names at issue from Complainant’s mark as the mark remains the principal feature of the domain names”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Similarly,
the Panel also finds the <thebloombergfx.com> domain name to be
confusingly similar to Complainant’s mark because it contains Complainant’s
BLOOMBERG mark in its entirety and adds the article “the,” the letters “f” and
“x,” and the generic top-level domain “.com”.
See Antoun v. Truth Squad, FA 114766 (Nat. Arb.
Forum Aug. 21, 2002) (stating that the article "the" is
"often added only for grammatical purposes, and may be superfluous to the
name itself"); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO
May 18, 2000) (finding the <westfieldshopping.com> domain name
confusingly similar because the WESTFIELD mark was the dominant element); see
also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
Sept. 27, 2002) (“[I]t is a well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interest in the disputed domain names under Policy ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent is not
commonly known by the disputed domain names.
As confirmed in the Response, Respondent is known by the name “Brian
Johnston.” See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Furthermore, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names resolve to a website entitled “Bloomberg Fx,” where Respondent provides informational services related to currency trading. The resulting website purports to be “a news source as sophisticated as Bloomberg, but tailored to FX.” The Panel finds that the use of another party’s registered mark to provide competing informational services neither qualifies as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Accordingly, the Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the disputed domain names in bad faith. The Panel finds that the registration and
use of a domain name that contains Complainant’s BLOOMBERG mark in its entirety
for the purpose of resolving to a financial information website causes a
likelihood of confusion as to Complainant’s sponsorship of or affiliation with
the resulting website. Further, the
Panel may reasonably infer from the nature of the resulting website that
Respondent is capturing commercial gain as a result of its operation. Accordingly, the Panel finds that Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iv) by attempting to profit off of the good will associated with Complainant’s
BLOOMBERG mark. This finding is furthered
by the fact that the resulting website offers informational services relating
to currency trading, a field in which Complainant offers similar services. See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see also Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum
Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Additionally, the Panel finds that Respondent’s registration and use of the disputed domain names qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii) because Respondent’s competitive use of the confusingly similar domain names constituted disruption of Complainant’s business. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <bloombergfx.net>, <bloombergfx.org>, <bloombergfx.biz>, <thebloombergfx.com> and <bloombergfx.info> domain names be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles
K. McCotter, Jr. (Ret.), Panelist
Dated: October 25, 2006
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