Bloomberg Finance L.P. v. africainvestor / Hubert Danso
Claim Number: FA1309001519284
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by William M. Ried of Bloomberg L.P., New York, USA. Respondent is africainvestor / Hubert Danso (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloombergafrica.com>, <bloombergafrica.net>, and <bloombergafrica.org>, registered with Tucows 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2013; the National Arbitration Forum received payment on September 12, 2013.
On September 13, 2013, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <bloombergafrica.com>, <bloombergafrica.net>, and <bloombergafrica.org> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 September 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2013 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@bloombergafrica.com, postmaster@bloombergafrica.net, and postmaster@bloombergafrica.org. Also on September 19, 2013, 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 .
On October 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
i. There is no evidence to suggest that Respondent is commonly known by the disputed domain name.
ii. The domain name does not point to any functioning website.
i. The domain name does not point to any functioning website.
ii. Respondent was aware of Complainant’s marks before registering the domain name.
Legal and Factual Bases for Contentions:
1. BLOOMBERG Registrations Owned By Complainant
This Complaint is based upon the trademark and service mark BLOOMBERG, Chilean Regs.785.615, 671.875 and 786.863; Czech Regs. 257639 and 216914; and South Korean Regs.0113526, 44948, 44947, 389613, 43099, 389612, 49368, and 54991 ("Complainant's Marks").
2. Other BLOOMBERG Trademark Registrations
In addition, Bloomberg Finance One L.P., a wholly owned subsidiary of Complainant, has obtained registrations for at least thirty-two (32) additional trademarks and service marks containing the word BLOOMBERG in the United States including BLOOMBERG, U.S. Regs. 2736744, 3430969, and BLOOMBERG.COM, U.S. Reg. 2769201. Moreover, Complainant and its affiliated companies (collectively, "Bloomberg") have obtained registrations for marks and continually used marks containing the word BLOOMBERG in over one hundred countries (collectively, "Complainant's Family of Marks").
3. Bloomberg's Domain Names
Complainant is the owner of the following domain names: <bloomberg.com>, registered September 29, 1993; <bloomberg.net>, registered March 8, 1997; and <bloomberg.org>, registered December 18, 1997. <Bloomberg.com> has been in continuous use by Complainant and its predecessor in interest since its registration in 1993. In addition, Bloomberg owns over 1,000 other domain names incorporating the word "bloomberg," including many defensive registrations of marks spelling "bloomberg" incorrectly.
4. The "Bloomberg" Trade Name
Complainant is the owner and bona fide senior user of the "Bloomberg" trade name ("Complainant's Trade Name"). Complainant's corporate parent, Bloomberg L.P., a Delaware limited partnership, has been in business continuously since 1981, and has operated under the "Bloomberg" name in the United States and around the world since at least as early as 1987. Bloomberg L.P. currently uses the "Bloomberg" trade name under license from Complainant.
5. Consumer Recognition of Bloomberg
Complainant's substantial advertising and promotion of Complainant's Marks, Complainant's Family of Marks, Complainant's Trade Name and Complainant's Domain Names have created significant goodwill and consumer recognition around the world. Since the inception of the business in 1981, and the adoption of the "Bloomberg" name in 1987, Bloomberg has become one of the largest providers of global financial news and data and related goods and services, and is recognized and trusted worldwide as a leading source of financial information and analysis. One of the many products and services offered by Bloomberg is the BLOOMBERG PROFESSIONAL SERVICE (the "BPS"), which provides access to news, analytics, communications, charts, liquidity, functionalities and trading services. There are currently over 300,000 BPS subscribers worldwide. Bloomberg is headquartered in New York City, and employs more than 15,000 people in over 150 offices around the world.
6. Respondent's Registration of BLOOMBERG Domain Name
Upon information and belief, Respondent registered these disputed domain names on May 23, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Complainant submitted evidence to prove trademark rights for BLOOMBERG in Chile, the Czech Republic and South Korea since at least 2003. It also filed evidence to prove that its wholly owned subsidiary, Bloomberg Finance One L.P. owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BLOOMBERG mark (e.g. Reg. No. 2,736,744 registered July 15, 2003).
The Panel finds that although Respondent appears to reside in Great Britain, Policy ¶ 4(a)(i) does not require Complainant to register the mark in the country in which Respondent operates, so long as it can demonstrate rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel holds that Complainant has sufficiently established its rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through its various national registrations of the mark.
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s mark as they fully incorporate the BLOOMBERG mark and adds only the word “africa.” The Panel determines that Respondent’s addition of the word “africa” to its domain name is not sufficient to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Specifically, in 3M Co. v. Ying ter Wang Ju Le Bu Ltd., FA 397553 (Nat. Arb. Forum Feb. 17, 2005) the panel held that the respondent’s <postitafrica.com> domain name was confusingly similar to the complainant’s POST-IT mark because the addition of the term “africa” was insufficient to distinguish the domain name from the mark. Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that there is no evidence to suggest that Respondent is commonly known by the disputed domain names. The Panel observes that the WHOIS information for the disputed domain names lists africainvestor / Hubert Danso as the registrant. Complainant argues that it has not licensed or otherwise permitted Respondent to use Complainant’s marks or any of Complainant’s family of marks, nor has Complainant licensed or otherwise permitted Respondent to register or use any domain name incorporating those marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that the domain name does not resolve to any functioning website. The Panel notes that Respondent’s domain names resolve to error messages. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the panel held that “Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).” Similarly, this Panel finds that Respondent’s failure to make an active use of the disputed domain names shows that the domain name is not being used for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s disputed domain names do not resolve to any functioning website. The Panel observes that Respondent’s disputed domain names links resolve to error messages. Prior panels have held that a respondent’s failure to make an active use of a disputed domain name proves bad faith use and registration under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Similarly, this Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent was aware of Complainant’s marks before registering the domain name. Complainant alleges that it has a strong reputation and a high-profile presence in the financial and media sectors, and is the subject of substantial consumer recognition and goodwill. Additionally, Complainant argues that it registered its <bloomberg.com> domain name in 1993 and has used the <bloomberg.com> domain name since 1993. Based on and accepting the foregoing, the Panel infers that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloombergafrica.com>, <bloombergafrica.net>, and <bloombergafrica.org> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 30, 2013
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