Bloomberg Finance L.P. v. Bloomberg Realty (India) Private Limited / Bloomberg
Claim Number: FA1204001439263
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Aimee Nassau Gardiner of Bloomberg L.P., New York, USA. Respondent is Bloomberg Realty (India) Private Limited / Bloomberg (“Respondent”), represented by Rakesh Prabhu of ALMT Legal, India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloomberbps.com>, <bloombergairways.com>, <bloombergcements.com>, <bloombergent.com>, <bloombergestate.com>, <bloombergglobal.com>, <bloomberghoms.com>, <bloomberghospital.com>, <bloomberghotels.com>, <bloomberghousing.com>, <bloomberginfra.com>, <bloombergltd.com>, <bloombergog.com>, <bloombergsolar.com>, <bloomrangent.com>, and <bloomrangmedia.com> (the “Domain Names”), registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com (the “Registrar”).
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2012, naming as Respondent Pravin Jain, Aries Technology. The National Arbitration Forum received payment on April 16, 2012.
On April 14, 2012, the Registrar confirmed by e-mail to the National Arbitration Forum that the Domain Names are registered with the Registrar and stated that Respondent is the current registrant of the Domain Names. The Registrar has verified that Respondent is bound by the Registrar’s registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 18, 2012 the Forum notified the Complainant of a deficiency in the Complaint and on April 23, 2012 the Complainant remedied this by filing an Amended Complaint with the Forum, naming Respondent as Respondent.
On April 24, 2012, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@[each of the Domain Names]. Also on April 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response dated May 13, 2012 was received by the Forum after the May 14, 2012 deadline prescribed by Rule 5(a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). The Panel has nevertheless taken it into account.
On May 18, 2012 the Complainant filed a timely Additional Submission in reply to the Response.
On May 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L Limbury as Panelist.
On May 29, 2012, Respondent filed an untimely Additional Submission, which the Panel has taken into account.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant says since 1987 the trade name BLOOMBERG has been used in the United States and around the world by its affiliate Bloomberg L.P. (under licence from Complainant) and has been ranked as one of the world’s best-known trademarks, having acquired secondary meaning in connection with Complainant’s financial news and information business.
Complainant and its affiliate companies have registered the trademark BLOOMBERG in many countries, including in India, the earliest in that country being No.724377, dated July 26, 1996, in relation to electronically transmitted publications in Class 9. Complainant is also the registrant of numerous “bloomberg” and “bloomberg-formative” domain names, including <bloomberg.com> (registered on September 29, 1993) and <bloomberg.net>, <bloomberg.org>, <bloomberg.biz> and <bloombergbusinessweek.com>.
The Domain Names were initially registered in the name Aries Technology on the following dates:
December 20, 2010: <bloombergltd.com>.
February 8, 2011: <bloombergairways.com>.
February 12, 2011: <bloombergent.com>, <bloombergestate.com>, <bloombergglobal.com>, <bloomberghospital.com>, <bloomberghotels.com>, <bloomberghousing.com> and <bloomberginfra.com>.
January 7, 2012: <bloomberghoms.com>, <bloombergsolar.com> and <bloomrangent.com>.
January 23, 2012: <bloomberbps.com>, bloombergcements.com>, <bloombergog.com> and <bloomrangmedia.com>.
Following a cease and desist letter from Complainant dated January 20, 2012, all the registrations were changed into the name of Respondent. The cease and desist letter asserted that Respondent and other addressees had filed several trademark applications for registrations of BLOOMBERG in various classes and were operating the website www.bloombergworldwide.com to promote a real estate/property development business under the names “Bloomberg Realty (India)” and “Bloomberg Development”.
On April 23, 2012, the website at www.bloombergltd.com described Respondent as “a company owned by Bloomberg group… engaged in the business of construction of over-the-top residential and commercial spaces…” The website prominently displayed a depiction of a flower and the word BLOOMBERG. On December 15, 2011, an application to register that depiction in India as a trademark in Class 35 was filed by Bloomberg Developers Private Limited, claiming first use since September 1, 2010.
Complainant seeks the transfer to it of the Domain Names, saying they are confusingly similar to its BLOOMBERG trademark and that Respondent has no rights or legitimate interests in respect of the Domain Names, which were registered and are being used in bad faith.
Complainant has not licensed or otherwise permitted Respondent to use Complainant’s marks nor to apply for or use any of the Domain Names. Given Complainant’s famous and substantial reputation in the mark BLOOMBERG, Respondent is obviously attempting to usurp Complainant’s goodwill. Registration and use of a domain name to capitalize on that reputation is evidence of bad faith registration and use.
B. Respondent
Respondent says the Domain Names are originally owned by it and that it owns and controls the websites to which they resolve. It has been successfully running the following businesses in India as Bloomberg group under the trade name ‘Bloomberg’ through various websites since 2010:
Bloomberg Estate Developers
Bloomberg Infrastructure
Bloomberg Hotel
Bloomberg Airways
Bloomberg Media
Bloomberg Info Tech
Bloomberg Entertainment
Bloomberg Power and Steel
Bloomberg Global
Bloomberg Developers
Bloomberg F & B Ventures
Bloomberg Logistics and Ports
Bloomberg Hospitals
Bloomberg Cements
Bloomberg Oil and Gas
Bloomberg Green Ventures
Bloomberg Global FZC (UAE)
Bloomberg Care Home
Respondent says:
“[T]he nascence of Bloomberg group came upon as an idea to create a difference in the global economy through committed services and high customer satisfaction index. The Bloomberg group started in 2010 under the professional leadership of Mr. Praful Saklecha who was…mainly involved in debt syndication for various industries including Reality [sic] and his unparallel vision to expand to global level, the company dilated and entered into different avenues of realty business. Soon the company was developing houses, residential townships, hospitals, hotels and various commercial projects in metros and business centers of India”.
Respondent denies filing the trade mark BLOOMBERG only to ride unfairly on the goodwill and reputation built by Complainant. The products and services provided by the two companies are completely different so there is no element of deceptive similarity between the two marks and the chances of customers getting confused are very slim.
The use of the name BLOOMBERG in both the marks is merely a coincidence.
Customers are not confused with regard to the origin of the goods emanating from each of the companies and hence the element of confusion does not arise.
Respondent’s Domain Names and website are not identical or confusingly similar to that of Complainant because:
· The Domain Names are not identical to Complainant’s domain names <bloomberg.com>, <bloomberg.net>, <bloomberg.org>, <bloomberg.biz> and <bloombergbusinessweek.com>. The use of the name ‘Bloomberg’ is merely a coincidence. Respondent’s mark Bloomberg is represented along with a flower. Bloomberg means flower or a family of flowers, and the same is projected in Respondent’s trademark logo. It also refers to Jewish ornamental name, a compound meaning ‘flower hill’ (from Yiddish Blum ‘flower’ or German Blume + German Berg ‘mountain’, ‘hill’);
· Respondent has uploaded no contents on the relevant websites which will confuse the user and allow Respondent to pass-off its services as those of Complainant;
· Complainant’s mark is not well known nor does it satisfy the parameters for considering it as a well known mark. Hence, it is in contradiction to claim that Complainant’s mark is identically similar to Respondent’s mark BLOOMBERG;
· Except for using the word ‘bloomberg’ which is not a well known mark, Respondent has nothing in common with the contents of Complainant’s website or the nature of Complainant’s services;
· The customers/users, who intend to avail themselves of services provided by Complainant/Respondent, are educated community, who can identify and differentiate their vendor by their name, location, kind of services etc. These ‘educated’ customers cannot be fooled by mere usage of the word ‘bloomberg’ on the website or domain names of Respondent. One factor in deciding upon likelihood of confusion in some cases has been whether the use of the name is directed at the same market as Complainant’s services. See Monty & Pat Roberts, Inc. v. Bartell , D2000-0300 (WIPO June 13, 2000); see also Chung, Mong Koo & Hyundai Motor Co. v. Individual, D2005-1068 (WIPO Dec. 21, 2005).
Respondent says it has a legitimate interest in respect of the Domain Names because:
· Complainant’s mark does not qualify as a well-known mark and thus its claim of spillover reputation and goodwill is baseless & inconsequential. Complainant’s mark does not have any kind of reputation in India. To rely on such a ground, Complainant should be able to prove reputation in India established before the date on which the [Respondent’s] application for registration of the mark ‘BLOOMBERG’ was filed; reputation substantial enough for use of the Applicant’s mark to be likely to deceive or confuse the public in India; and evidence of substantial advertising in International magazines/ journals circulated in India and aimed at the relevant consumers/public;
Respondent has filed for registration of its trademark ‘BLOOMBERG’ in various classes. Respondent has through filing for registration of its trademark shown that it has taken steps to protect its mark in India. The Respondent is known by the mark and is using the Domain Names with a bona fide offering of services. Respondent is into varied avenues of realty business and also developing houses, residential townships, hospitals, hotels and various commercial projects in metros and business centres of India: EAuto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000).
· Respondent’s group of companies are duly registered in India under the Companies act of 1956 and they have put the Domain Names into fair use without any intent for commercial gain by misleading customers or to tarnish the trademark or service mark of Complainant. Respondents are not carrying any content on their websites which is misleading or providing false information to their customers to lure them and make them believe that services are offered by Complainant;
· At all given times, Respondent has promoted its services with sincerity and integrity. Respondent has never attempted to either pass-off its services or mislead customers to lure them to believe that the services are provided by Complainant in India.
Respondent denies having registered the Domain Names in bad faith. Respondent has been conducting the business using the website of the Domain Names since 2010. As a result of Respondents hard work and intelligence, the business conducted by Respondent under the name ‘bloomberg’ has been successful. For the said reasons, it is incorrect to conclude that the Domain Names were registered in bad faith.
Respondent says the intention of Complainant in approaching this Forum cannot be termed anything but an exertion of its dominant position in the market, to gain advantage and destroy competition.
Respondent has not registered the Domain Names to prevent Complainant from reflecting its trademark in its domain name. In pronouncing on the presence or absence of bad faith, the geographical area and the field of services play a major role in determining the bad faith: Physik Instrumente GmbH. & Co. v. Kerner , D2000-1001 (WIPO Oct. 3, 2000). The area of operation or conducting business of Respondent is different from that of Complainant. Hence it is incorrect to conclude that the Domain Names were registered in bad faith.
Respondent acknowledges that Complainant is a huge business establishment providing varied service from their offices worldwide. Any user / customer of Complainant can contact or avail these services from any of Complainant’s offices located globally. On the other hand Respondent has clearly identified itself as one of the service providers who are into different avenues of realty business and also developing houses, residential townships, hospitals, hotels and various commercial projects in metros and business centers of India. Respondent and Complainant deal with completely different types of goods and services and thus eliminating any possibilities of confusion amongst current and prospective customers, and therefore there is no question or issues of confusion in the minds of the public at the time of making the application or at the time of registration, as to who is the original owner of the trademark BLOOMBERG. Moreover, the contact details provided by Respondent on its websites clearly mentions the address of Respondent, contact numbers of Respondent in India, contact email address, which are different from those of Complainant. On reviewing the contact details provided by Respondent on its websites at ‘Contact us”, it is impossible for any user or customer to get confused that the services are actually provided by Complainant in India.
There is no previous history or pattern of misuse of domain names by Respondent. As owner of its trademark, Complainant is free to reflect the mark in its domain names. There is no obstruction for Complainant to use its trademarks/service marks on its websites and conduct business.
The Domain Names have been registered by Respondent in good faith. Respondent did not register the Domain Names for the purpose of disrupting Complainant’s business or to attract Complainant’s customers to the website.
There is no evidence that Respondent registered the Domain Names for the purpose of selling them or to attract internet users for financial gain or to disrupt Complainant’s business.
Thus there is no attempt by Respondent to intentionally attract internet users for commercial gain to Respondent’s website or other on-line locations. The website of Respondent does not create a likelihood of confusion to internet users as to the source, sponsorship or endorsement of Respondent’s business, location of business, services etc.
C. Additional Submissions
In reply, Complainant makes the following submissions.
The test for determining confusing similarity is confined to a comparison of the Domain Names and the trademark alone. Hence, the content of Respondent’s website, the nature of the services offered by Respondent and the educational level of Complainant’s customers are irrelevant.
The proper focus is not on whether Complainant is well-known in India but on the confusion that the Domain Names will create globally because the Domain Names are all “.com” gTLDs: Patek Phillippe S.A. v. Gen. Estates, WIPO Case No. D2008-01192.
In any event, Complainant’s mark is well-established and recognized in India. In 1996, Complainant established Bloomberg Data Services and registered its mark in India. In 2005, Complainant established Bloomberg Television Production Services India Private Limited and in 2009 launched “Bloomberg UTV” as a 24-hour English language business and financial broadcast news outlet that currently reaches over 30 million households in India. Complainant has also used the BLOOMBERG mark in a wide variety of advertisements and publications in India. In contrast, Respondent has provided no evidence that it is known by the mark, which it claims to have begun using in 2010.
Respondent seeks to misappropriate Complainant’s mark to create a global brand to offer services similar to those provided by Complainant. On a related website, <bloombergworldwide.com>, Respondent makes clear its goal is to become a global business brand, through a multitude of business channels comprising…information technology, entertainment and media. Respondent implicitly concedes that its services overlap with Complainant’s by alleging that Complainant has filed this action to “destroy competition”.
The Panel in Physik Instruments, cited by Respondent, found that a British respondent could not have engaged in bad faith because, prior to purchasing the disputed domain name, it had never heard of complainant, a small German measurement equipment company. Here, Respondent has not alleged that, when it formed its company in 2010, it was unaware of Complainant’s mark. Instead, Respondent acknowledges Complainant’s dominant market position and has offered no explanation for why it selected the “Bloomberg” name and incredulously suggests it was “merely a coincidence” and part of a strategy to “create a difference in the global economy through committed services and high consumer satisfaction index”.
Respondent has in bad faith registered and failed to use multiple domain names including Complainant’s mark. Respondent has shown a pattern of misuse of domain names by registering 17 domain names that are the subject of this and another action currently pending before the Forum, as well as <bloombergrealty.in>, which Complainant is challenging also. 16 out of these 18 domain names point to websites that provide no content or information. Multiple registrations coupled with the non-use of domain names is sufficient evidence of bad faith. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000).
In other proceedings, Complainant is challenging Respondent’s registration of <bloombergworldwide.com> and <bloombergrealty.in>.
Respondent’s Additional Submission was substantially repetitious of its Response. It also cited Channel D Corporation v Channel D, NAF Case No. FA94298, Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029 and Reuters Limited v. Ghee Khaan Tan, WIPO Case No. D2000-0670.
Complainant has established the elements entitling it to transfer of 14 of the 16 Domain Names but has failed to establish all elements in relation to 2 domain names.
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."
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 clearly has registered trademark rights in India and elsewhere in the mark BLOOMBERG.
The question to be determined under this heading is whether Respondent’s Domain Names are identical or confusingly similar to Complainant’s BLOOMBERG trademark, not (as asserted by Respondent) whether they are identical or confusingly similar to Complainant’s domain names.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The top level domain “.com” is to be disregarded. See Magnum Piering, Inc. v. The Mudjackers, D2000-1525 (WIPO Jan 29, 2001); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Likewise the content of a respondent’s website (including whether the use of the domain name is directed at the same market as Complainant’s services) must be disregarded, see A&F Trade Mark, Inc. v. Jorgenson, D2001-0900 (WIPO Sept. 19, 2001), except where that content might indicate an intention on the part of a respondent to confuse Internet users, in which case the conclusion that the domain name is confusingly similar to the trademark may more readily be drawn. See RapidShare AG v. randi, D2010-1089 (WIPO Aug. 17, 2010).
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?” See SANOFI-AVENTIS v. Trevenio, WIPO Case No. D2007‑0648.
Applying this test, the Panel finds the following domain names to be confusingly similar to Complainant’s registered BLOOMBERG trademark because they incorporate that mark in its entirety and the additional word or letters do nothing to detract from the distinctiveness of the mark:
<bloombergairways.com>, <bloombergcements.com>, <bloombergent.com>, <bloombergestate.com>, <bloombergglobal.com>, <bloomberghoms.com>, <bloomberghospital.com>, <bloomberghotels.com>, <bloomberghousing.com>, <bloomberginfra.com>, <bloombergltd.com>, <bloombergog.com> and <bloombergsolar.com>.
The Panel finds the domain name <bloomberbps.com> also to be confusingly similar to Complainant’s BLOOMBERG mark, because the initial letters “bloomber” are likely to cause Internet users to wonder whether the domain name is associated in some way with Complainant, while the letters “bps” are likely to be understood as an acronym and, as such, insufficient to prevent confusion. See Bloomberg L.P. v. Hebat Interactive, NAF Case No. FA96762 (finding <bloomberk.com> confusingly similar to Complainant’s BLOOMBERG mark).
As regards the domain names <bloomrangent.com>, and <bloomrangmedia.com>, the Panel is not satisfied that they are confusingly similar to Complainant’s BLOOMBERG mark, since the word “bloom” is unlikely to cause Internet users to wonder whether the domain name is associated in some way with Complainant and the addition of “rangent” and “rangmedia”do not alter this conclusion.
Complainant has established this aspect of its case with regard to 14 of the 16 domain names with which this proceeding is concerned. Henceforth these reasons will be confined to a consideration of those 14 domain names (“the 14 Domain Names”).
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The individual words “bloom” and “berg” are common enough. It is their combination that makes the mark distinctive.
As stated by the learned Panelist in Reuters Limited v. Ghee Khaan Tan, WIPO Case No. D2000-0670: “In selecting the ‘.com’ domain the Respondent put himself firmly (albeit not exclusively) into the international commercial sphere”. Accordingly, Respondent’s use of the gTLD “.com” in the 14 Domain Names indicates that they are aimed at the global population of Internet users, so the degree to which Complainant’s Indian trademarks are known in that country is not determinative.
Complainant has shown that its BLOOMBERG mark has been very well known worldwide for many years and was ranked 19th in a list of famous and well-known marks in Trademark World, April 2004; that Complainant first registered the BLOOMBERG mark in India in 1996; and that Respondent has no authority from Complainant to use that mark nor to register the 14 Domain Names. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the 14 Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in those names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), and the cases there cited.
On the material before the Panel it appears Respondent conceived the idea of expanding to the “global level” under various combinations of the name Bloomberg in 2010 and went about incorporating companies, applying to register trademarks and registering domain names, all of which incorporated the Bloomberg name, in furtherance of that idea. Respondent has not denied knowledge of Complainant’s BLOOMBERG mark when that idea was adopted. In contending that Complainant is in a dominant position and is attempting by these proceedings to destroy competition, Respondent has acknowledged that the parties are in competition with each other. It is more likely than not that Respondent was aware of that fact at all relevant times. These circumstances lead to the conclusion that Respondent had Complainant and its mark in mind not only when it registered the 14 Domain Names but when it conceived the idea of expanding globally under Bloomberg-formative names in 2010.
It follows that, despite its assertion that the use of the name ‘Bloomberg’ is merely a coincidence, Respondent was more likely than not motivated to adopt those names by a desire to trade off Complainant’s global reputation in its BLOOMBERG mark. Use of a domain name which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services for the purposes of the Policy, paragraph 4(c)(i), and cannot bring Respondent within the scope of paragraphs 4(c)(ii) or (iii). See Ciccone v. Parisi, D2000‑0847 (WIPO Oct. 12, 2000).
In particular, given the motivation just mentioned, the fact that the 14 Domain Names reflect Respondent’s corporate names and trademarks cannot bring Respondent within the scope of paragraph 4(c)(ii), which requires more than mere correspondence between a personal or corporate name and a disputed domain name. See Frampton v. Frampton Enters., Inc., D2002-0141 (WIPO Apr. 17, 2002), citing Dell Computer Corp.v. Logo Excellence , D2001-0361 (WIPO May 7, 2001).
In Channel D Corporation v Channel D, NAF Case No. FA94298, cited by Respondent in its Additional Submission, the respondent incorporated a company in 1994, prior to the incorporation of the complainant (hence prior to the creation of the complainant’s trademark), and registered the corresponding disputed domain name in 1999. Further, the parties were found to be in completely unrelated businesses. Here, Respondent incorporated its companies, applied to register its trademarks and registered its corresponding domain names years after Complainant’s BLOOMBERG trademark had become internationally famous. Further, Respondent has acknowledged that the parties are in competition, a factor which also distinguishes the present case from Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029 and Reuters Limited v. Ghee Khaan Tan, WIPO Case No. D2000-0670.
Only one of the 14 Domain Names resolves to an active website, namely <bloombergltd.com> which, in its presentation, albeit with contact details in India and some services which differ from those hitherto offered by Complainant, is nevertheless likely to be understood by Internet users to be an emanation of Complainant’s business in India and hence not to give rise to a legitimate interest on the part of Respondent. The remaining 13 of The 14 Domain Names do not lead to active websites so cannot be found to have been used or developed for a legitimate non-commercial or fair purpose nor to have been used in connection with a bona fide offering of goods or services. See State Farm Mut. Auto. Ins. Co. v. Faw , FA 94971 (Nat. Arb. Forum Jul. 12, 2000), and Leland Stanford Junior Univ. v. Zedlar Transcription & Translation , FA 94970 (Nat. Arb. Forum Jul. 11, 2000).
The respondent in EAuto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000), cited by Respondent, had sold relevant goods for 10 years before choosing the disputed domain name, which was descriptive of its prior business. None of the 14 Domain Names is descriptive, since they all wholly incorporate Complainant’s distinctive mark.
In the result, Respondent having failed to demonstrate that it has rights or legitimate interests in the 14 Domain Names, the Panel finds that Complainant has established this element of its case.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
4(b)(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It should be noted that it is necessary for both bad faith registration and bad faith use to be established. However, the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
For the reasons given under the previous heading, the Panel finds that all the 14 Domain Names were registered in bad faith, since they were registered for the purpose of trading globally off Complainant’s goodwill in its famous BLOOMBERG trademark.
As mentioned, the only domain name which leads to an active website is <bloombergltd.com>. The Panel finds that this domain name has been used by Respondent intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BLOOMBERG mark as to the source, sponsorship, affiliation or endorsement of its website. Under paragraph 4(b)(iv), such use constitutes evidence of both bad faith registration and bad faith use.
The remaining 13 domain names do not resolve to active websites. However, since the Panel cannot conceive of any use to which they could be legitimately put without creating a similar likelihood of confusion, the Panel finds that Respondent’s passive use of those domain names constitutes use in bad faith.
Accordingly Complainant has established this element of its case with respect to the 14 Domain Names.
Since Complainant has established all three elements required under the ICANN Policy with regard to the 14 Domain Names, the Panel concludes that relief with respect to those domain names shall be GRANTED. Complainant having failed to establish all three elements required under the ICANN Policy with regard to the domain names <bloomrangent.com> and <bloomrangmedia.com>, the Panel concludes that relief with respect to those domain names shall be DENIED.
Accordingly, it is Ordered that the <bloomberbps.com>, <bloombergairways.com>, <bloombergcements.com>, <bloombergent.com>, <bloombergestate.com>, <bloombergglobal.com>, <bloomberghoms.com>, <bloomberghospital.com>, <bloomberghotels.com>, <bloomberghousing.com>, <bloomberginfra.com>, <bloombergltd.com>, <bloombergog.com> and <bloombergsolar.com> domain names be TRANSFERRED from Respondent to Complainant and that the domain names <bloomrangent.com> and <bloomrangmedia.com> REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: May 30, 2012.
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