DECISION

 

Bloomberg, L.P. v Ghee Khoon Tan a/k/a Kevin

Claim Number: FA0105000097185

 

PARTIES

Complainant is Bloomberg, L.P., New York, NY, USA (“Complainant”) represented by Alexander Kim.  Respondent is Ghee Khoon Tan a/k/a Kevin, Singapore, SG (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ebloomberg.com> registered with Register.com.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 9, 2001; the Forum received a hard copy of the Complaint on May 14, 2001.

 

On May 15, 2001, Register.com confirmed by e-mail to the Forum that the domain name <ebloomberg.com> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 June 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 21, 2001 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@ebloomberg.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 Forum transmitted to the parties a Notification of Respondent Default.

 

On June 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

On its face, the domain name registered by Respondent is confusingly similar to Complainant's mark, BLOOMBERG.  The domain name <ebloomberg.com> incorporates variations of the mark BLOOMBERG in a thinly veiled attempt to garner the goodwill and recognition of the famous mark, BLOOMBERG.

 

The disputed domain name <ebloomberg.com> is virtually identical to Complainant's well-established mark.  The only difference between Complainant's mark and the domain name at issue is the addition of the letter "e".

 

Respondent has no rights or legitimate interests in <ebloomberg.com>.

 

Complainant has not licensed or otherwise permitted Respondent to use the Complainant's mark or any of the BLOOMBERG family of marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.

 

To Complainant's knowledge, Respondent has never been commonly known by BLOOMBERG or EBLOOMBERG and has never acquired trademark or service mark in such name. There is no evidence to suggest that Respondent had ever offered any product or service in relation to the disputed domain name.

 

Respondent registered and used the domain name in bad faith

 

B. Respondent

No Response was submitted.

 

FINDINGS

Complainant registered the trademark and service mark BLOOMBERG, March 18, 1997 on the Principal Register of the United States Patent and Trademark Office (hereinafter the "USPTO") as Registration No. 2,045,947.

 

Complainant has also registered on the Principal Register of the USPTO, and continually used in commerce, a family of at least twenty-three trademarks and service marks containing the word BLOOMBERG.  In addition, Complainant has obtained registrations for marks containing the word BLOOMBERG in over seventy-five countries around the world.

 

Respondent registered <ebloomberg.com> on August 4, 1999, and never developed a website for the domain name.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

With the mere addition of the letter “e” to Complainant’s BLOOMBERG mark, Respondent’s domain name <ebloomberg.com> is confusingly similar to Complainant’s mark.  See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also Harrison v. 1WebAddress.com, FA 97090 (Nat. Arb. Forum June 4, 2001) (finding the <egeorgeharrison.com> domain name to be confusingly similar to Complainant’s GEORGE HARRISON mark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <ebloomberg.com> domain name.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). 

 

Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response.  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 interest in the Domain Names”).

 

Respondent’s registration and passive holding of the <ebloomberg.com> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services or any evidence of preparation to use the domain name for any legitimate purpose pursuant to Policy ¶ 4(c)(i).  See American 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).

 

Respondent’s passive holding makes it unlikely that he is commonly known by the <ebloomberg.com> domain name, pursuant to Policy ¶ 4(c)(ii).  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”). 

 

Additionally, Complainant’s mark is so well established and famous that it would not be possible that Respondent would be commonly known by a domain name confusingly similar to Complainant’s BLOOMBERG mark by merely holding the domain name.  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

 

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <ebloomberg.com> domain name pursuant to Policy ¶ 4(c)(iii), when Respondent is engaged in passive holding of the domain name.  See 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).

 

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <ebloomberg.com> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent’s passive holding of the disputed domain name establishes Respondent’s bad faith.  See 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 paragraph 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).

 

Furthermore, bad faith is evidenced by the obvious connection the <ebloomberg.com> domain name has with Complainant’s enterprise, as it incorporates Complainant’s famous BLOOMBERG mark in its entirety.  Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain name supports a finding of bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <ebloomberg.com> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret)

 

Dated: July 3, 2001