Bloomberg Finance L.P. v. Gabriel Rodriguez
Claim Number: FA1807001796534
Complainant is Bloomberg Finance L.P. (“Complainant”), represented by Brendan T. Kehoe of Bloomberg L.P., New York, USA. Respondent is Gabriel Rodriguez (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloombergmbaranking.online>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2018; the Forum received payment on July 13, 2018.
On July 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bloombergmbaranking.online> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2018 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@bloombergmbaranking.online. Also on July 13, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest providers of financial news and data in the world, and it uses the BLOOMBERG mark to market its goods and services.
Complainant holds a registration for the BLOOMBERG trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,674,394, registered January 20, 2015.
Respondent registered the domain name <bloombergmbaranking.online> on May 25, 2018.
The domain name is confusingly similar to Complainant’s BLOOMBERG mark.
Respondent is not licensed or otherwise permitted to use Complainant’s BLOOMBERG mark.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Moreover, in an obvious attempt to confuse Internet users, Respondent prominently features the BLOOMBERG trademark on the resolving website.
Respondent has no rights to or legitimate interests in the domain name.
Respondent attempted to sell the domain name to Complainant.
Respondent failed to respond to Complainant’s cease and desist letter.
Respondent knew of Complainant’s mark before registering the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the BLOOMBERG trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registrations for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Dominican Republic). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bloombergmbaranking.online> domain name is confusingly similar to Complainant’s BLOOMBERG mark. The domain name incorporates the mark in its entirety, merely adding the descriptive terms “mba” and “ranking,” which relate to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.online.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Traditional Medicinals, Inc. v. Flippa Chick, FA 328702 (Forum July 15, 2010) (finding confusing similarity under Policy ¶ 4(a)(i) where a respondent’s domain name contained a UDRP complainant’s mark in its entirety except for the space separating the terms of the mark, and added the descriptive term “herbal tea” and the generic top-level domain (“gTLD”) “.com”).
See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that adding a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the contested domain name, <bloombergmbaranking.online>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <bloombergmbaranking.online>, and that Complainant has not licensed or otherwise authorized Respondent to use the BLOOMBERG mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Gabriel Rodriguez,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.”). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <bloombergmbaranking.online> domain name to resolve to a website at which, in a manner similar to Complainant’s annual MBA business school ranking product, Respondent features articles describing various MBA programs in the United States and job placements associated with attending these schools. Moreover, again without objection from Respondent, Complainant contends that, in an attempt to confuse Internet users, Respondent prominently features the BLOOMBERG trademark on the resolving website. In the circumstances presented in the Complaint, we may comfortably presume that Respondent seeks to profit financially from this use of the domain name. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum August 22, 2017):
The usage of Complainant’s … mark … [in a confusingly similar domain name] … is not fair as the [resolving] site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off .... As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent knew of Complainant and of its rights in the BLOOMBERG mark when Respondent registered the challenged <bloombergmbaranking.online> domain name. This stands as proof of Respondent’s bad faith in registering the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a UDRP complainant's rights in a mark when registering a confusingly similar domain name).
We are also convinced by the evidence that Respondent’s use of the domain name <bloombergmbaranking.online> domain name, which is confusingly similar to Complainant’s BLOOMBERG trademark, is an attempt by Respondent to profit by the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this demonstrates Respondent’s bad faith in registering and using the domain name. See MetroPCS, Inc. v. Robertson, FA 809749 (Forum November 13, 2006), the panel there finding that a UDRP respondent incorporated a complainant’s trademark into disputed domain names and used images of that complainant’s trademarks and products at the resolving websites, thus creating the false impression that those sites were sponsored by or otherwise endorsed by that complainant, and therefore that:
This is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bloombergmbaranking.online> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
August 6, 2018
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