Bloomberg Finance L.P. v. bloomberg
Claim Number: FA1204001440735
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Aimee Nassau Gardiner of Bloomberg L.P., New York, USA. Respondent is Bloomberg and Pravin Jain (“Respondent”), represented by Rakesh Prabhu of ALMT Legal, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergworldwide.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Charles A. Kuechenmeister, Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2012; the National Arbitration Forum received payment on April 24, 2012.
On April 14, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <bloombergworldwide.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@bloombergworldwide.com. Also on April 26, 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 timely Response was received and determined to be complete on May 14, 2012.
On May 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
On May 18, 2012 Complainant timely filed an Additional Submission in conformity with the Forum’s Supplemental Rule 7.
On May 29, 2012 the Forum forwarded to the Panel an Additional Submission from the Respondent with a notice that the same was not timely filed. Because the Additional Submission was not timely filed the Panel elected not to consider it.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Indian Controller General of Patents Designs and Trademarks (“CGPDTM") (e.g., Reg. No. 724378B registered July 26, 1996);
ii. Czech Republic Industrial Property Office (“CRIPO”) (e.g., Reg. No. 257,639 registered September 29, 2003); and
iii. United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,736,744 registered July 15, 2003).
C. Additional Submission--Complainant
1. The fact that Respondent may provide different services than Complainant is immaterial in determining whether the Domain Name is confusingly similar to Complainant’s BLOOMBERG Mark.
2. Complainant’s BLOOMBERG Mark is well-known in India.
3. Respondent’s own advertising and promotional material appearing on its website states that it intends to become a “global business brand.” Moreover it has organized numerous companies in India which misappropriate Complainant’s BLOOMBERG Mark in a variety of business sectors, including Bloomberg Global Private Limited, Bloomberg Estate Developers Private Limited, Bloomberg Hotels Private limited, Bloomberg Hospitals Private Limited, etc. This demonstrates that Respondent is doing business in numerous business sectors and is competing with Complainant in many of them, so confusion is likely to result.
4. Complainant is instituting proceedings to challenge each of these company names and trademark applications.
5. Respondent’s registration of numerous other domain names incorporating the BLOOMBERG Mark is evidence of its bad faith with respect to the Domain Name because it is evidence of a pattern of misuse of domain names. Further, many of the websites resolving from these names show no uses associated with them, and this also is evidence of bad faith.
6. Complainant has initiated other UDRP proceedings against sixteen other Bloomberg-related domain name registrations by the Respondent.
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 the Complainant to 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; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Panel makes the findings and determinations set forth below with respect to the Domain Name at issue between the parties.
As a preliminary matter, Respondent asserts that a number of domain names registered by it which incorporate the name “Bloomberg,” e.g., bloombergairways.com, bloombergglobal.com, bloomberghousing.com, etc., are the subject matter of this Complaint. That is not correct. The only domain name at issue between the parties in this case is <bloombergworldwide.com>, the Domain Name.
Complainant registered its BLOOMBERG Mark with the USPTO (e.g., Reg. No. 2,736,744 registered July 15, 2003), the CGPDTM (e.g., Reg. No. 724378B registered July 26, 1996), and the CRIPO (e.g., Reg. No. 257,639 registered September 29, 2003). See Complainant’s Exhibit A. Based upon this evidence, the Panel concludes that Complainant has established its rights in the BLOOMBERG Mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
The Domain Name includes the entire BLOOMBERG Mark, adding the generic top-level domain (“gTLD”) “.com” and the generic term “worldwide.” The addition of these two generic elements fails sufficiently to differentiate the Domain Name from Complainant’s BLOOMBERG Mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Respondent asserts that the nature of its business and location of operations (real estate development in India) are so different from those of Complainant that there is little if any likelihood of confusion resulting from the similarity in names. The Panel does not accept this theory. The Policy ¶ 4(a)(i) neither invites nor permits a panel to consider extrinsic factors such as nature of business or geographic location in determining whether a domain name is identical or confusingly similar to the mark of another person. The panel should look only at the names themselves. Fondation Le Courbusier v. Monsieur Bernard Weber, Madame Heidi Weber, D2003-0251, (WIPO Apr. 7, 2003).
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the BLOOMBERG Mark for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent’s lack of rights or legitimate interest in the Domain Name is demonstrated as follows: (1) Respondent has not been licensed or permitted to use the BLOOMBERG mark or any domain names incorporating that mark, (2) on information and belief, Respondent has not adopted the company name “Bloomberg” and provided a false telephone number and email address when registering the Domain Name, and (3) Respondent cannot claim a legitimate right or interest in the Domain Name based on the notion that it has used the Domain Name in connection with a bona fide offering of goods and services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
To this end, Respondent asserts that it has organized a group of companies whose names incorporate the name “Bloomberg,” and that it has filed for a trademark with the CGPDTM for the Bloomberg name with regard to its real estate services. Respondent has also registered the Domain Name and a number of others which incorporate the name Bloomberg. It claims that it is therefore commonly known by the name Bloomberg within the meaning of Policy ¶4(c)(ii). Respondent also asserts that since 2010 it has been using the Domain Name in connection with its business operations, which are in fact a bona fide offering of goods and services within the meaning of Policy ¶4(c)(i). Respondent offered no independent or documentary evidence in support of these claims. However, Exhibit F attached to the Complaint consists of screenshots of Respondent’s website resolving from the Domain Name, which clearly evidence some sort of business being carried on under the name Bloomberg. Also, the cease-and-desist demand letter and attachments which Complainant’s local counsel in India sent to Respondent, attached to the Complaint as Exhibit G, contains a copy of Respondent’s trademark application. Finally, the Declaration of William M. Ried in support of Complainant’s Additional Submission describes the results of Complainant’s investigation of the activities of Respondent or the promoters or controllers of Respondent and a group of eighteen other related companies (the “Indian entities”) that have incorporated the name Bloomberg into their corporate names. The Response and Mr. Ried’s Declaration agree as to the names of the companies involved. It is clear from the factual allegations of both parties that the Indian entities are embarked upon a number of different business ventures using the name Bloomberg. The Indian entities have also registered some sixteen domain names, in addition to the Domain Name, that incorporate the name Bloomberg. Complainant, for its part, is instituting proceedings to challenge the names of the companies Respondent or its controllers have organized, and the Indian entities’ trademark applications.
These parties are involved in a number of disputes over the right to use the name Bloomberg generally in connection with a broad range of business ventures. Their dispute over the Domain Name is only one of the trademark or trademark-related matters pending between them, and both parties assert that they have legitimate rights to use that name. Such cases are not within the scope of the Policy. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Other panels have also chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). The Panel concludes that it would not be appropriate to go forward with this matter under the Policy, and that the Complaint should be dismissed.
For the reasons set forth above, the Panel ORDERS that the Complaint be, and it hereby is DISMISSED, without prejudice.
Charles A. Kuechenmeister, Panelist
Dated: May 29, 2012
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