Bloomberg L.P. v. GAF c/o Thomas Pearson
a/k/a Tom Pearson
Claim
Number: FA0308000190614
Complainant is Bloomberg L.P., New York, NY
(“Complainant”) represented by Alexander
Kim. Respondent is GAF c/o Thomas Pearson a/k/a Tom Pearson, El Cajon, CA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bloomberg-co.com>, <bloomberg-inc.com>,
<bloomberg-intl.com>, <bloomberg-news.net>, <bloomberg-online.com>,
<bloomberg-usa.com>, <bloomberg-web.com>, <bloomberg-web-inc.com>,
<bloomberg-web-intl.com>, <bloomberg-web-online.com>,
<bloomberg-web-usa.com>, <bloombergweb.com>, and <bloomberg-news.biz>,
registered with Abacus America, Inc. d/b/a Names4Ever.Com
(“Names4Ever.Com”).
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 26, 2003; the Forum received a hard copy of the
Complaint on September 4, 2003.
On
September 4, 2003, Names4Ever.Com confirmed by e-mail to the Forum that the
domain names <bloomberg-co.com>, <bloomberg-inc.com>,
<bloomberg-intl.com>, <bloomberg-news.net>, <bloomberg-online.com>,
<bloomberg-usa.com>, <bloomberg-web.com>, <bloomberg-web-inc.com>,
<bloomberg-web-intl.com>, <bloomberg-web-online.com>,
<bloomberg-web-usa.com>, <bloombergweb.com>, and <bloomberg-news.biz>
are registered with Names4Ever.Com and that Respondent is the current
registrant of the names. Names4Ever.Com
has verified that Respondent is bound by the Names4Ever.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
September 8, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 29, 2003 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@bloomberg-co.com, postmaster@bloomberg-inc.com,
postmaster@bloomberg-intl.com, postmaster@bloomberg-news.net, postmaster@bloomberg-online.com,
postmaster@bloomberg-usa.com, postmaster@bloomberg-web.com, postmaster@bloomberg-web-inc.com,
postmaster@bloomberg-web-intl.com, postmaster@bloomberg-web-online.com, postmaster@bloomberg-web-usa.com,
postmaster@bloombergweb.com, and postmaster@bloomberg-news.biz 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
October 10, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Respondent’s
<bloomberg-co.com>, <bloomberg-inc.com>, <bloomberg-intl.com>,
<bloomberg-news.net>, <bloomberg-online.com>, <bloomberg-usa.com>,
<bloomberg-web.com>, <bloomberg-web-inc.com>, <bloomberg-web-intl.com>,
<bloomberg-web-online.com>, <bloomberg-web-usa.com>, <bloombergweb.com>,
and <bloomberg-news.biz> domain names are confusingly similar to
Complainant’s BLOOMBERG and BLOOMBERG NEWS marks.
Respondent
does not have any rights or legitimate interests in respect of the disputed
domain names.
Respondent
registered and used the disputed domain names in bad faith.
B. Respondent
Respondent did not submit a Response
in this proceeding.
Complainant
company Bloomberg L.P. was founded in 1983 by Michael R. Bloomberg, now mayor
of New York City. Complainant is one of
the largest providers of worldwide financial news and information as well as
related goods and services. Recognized
worldwide as a leading financial information and analysis source, Complainant
employs nearly 8,000 employees in over 100 offices. Complainant owns registered U.S. trademarks in BLOOMBERG and
BLOOMBERG NEWS, registered in 1997 and 1999, respectively, as well as
trademarks registered in other countries.
Respondent
registered <bloomberg-news.net> on February 2, 2003, <bloomberg-news.biz>
on February 3, 2003, and the remaining domain names on February 13, 2003. There is no evidence that Respondent has
made any use of any of the 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."
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.
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 has
proven its rights in BLOOMBERG and BLOOMBERG NEWS. Each of the disputed domain names is confusingly similar to those
marks.
The <bloomberg-news.net>
and <bloomberg-news.biz> domain names would be identical to the
BLOOMBERG NEWS mark, but for the hyphen between the two words. The use of a hyphen in domain names will not
render them dissimilar to an otherwise identical mark. See Easyjet Airline Co. Ltd. v. Harding,
D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name
<easy-jet.net> was virtually identical to Complainant's EASYJET
mark and therefore that they are confusingly similar); see also InfoSpace.com v. Tenenbaum Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical
to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not
distinguishing features”).
Similarly, <bloomberg-co.com>,
<bloomberg-inc.com>, <bloomberg-intl.com>, <bloomberg-online.com>,
<bloomberg-web.com>, <bloombergweb.com>, and <bloomberg-usa.com>
are each confusingly similar to Complainant’s BLOOMBERG mark as each fully
incorporates the BLOOMBERG mark and adds a generic term that Internet users
might enter if searching for Complainant’s website. See Arthur Guinness
Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29,
2000) (finding that common geographic qualifiers or generic nouns can rarely be
relied upon to differentiate the mark if the other elements of the domain name
comprise a mark or marks in which another party has rights).
Finally, the <bloomberg-web-online.com>,
<bloomberg-web-inc.com>, <bloomberg-web-intl.com>,
and <bloomberg-web-usa.com> domain names are also sufficiently
similar to Complainant’s BLOOMBERG mark, as each appends two generic terms to
the mark, which might cause search engines to mistakenly refer users seeking
Complainant’s site to a site hosted by Respondent, or which might cause
confusion as to site sponsorship for viewers of the resultant web pages. See Magnum Piering, Inc. v. Mudjackers,
D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not
change the confusing similarity); see also Am. Online, Inc. v. Anytime
Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding
that Respondent’s domain names, which incorporated
Complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not demonstrated any use of the disputed domain names and has not come forward
to explain what legitimate use it might have for the names. Thus, the Panel may presume that Respondent
lacks rights and legitimate interests in the domain names at issue. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence); see also 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); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan.
18, 2001) (stating that the "use of complainant’s entire mark in
infringing domain names makes it difficult to infer a legitimate use").
There is no
evidence in the record to suggest that Respondent is commonly known by any of
the disputed domain names pursuant to Policy ¶ 4(c)(ii), and given the direct
relationship between the names and the business of Complainant, such a claim
would seem highly implausible. See Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the
nonsensical nature of the [<wwwmedline.com>] domain name and its
similarity to Complainant’s registered and distinctive [MEDLINE] mark, the
Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark).
By passively
holding the domain names without use, Respondent has not demonstrated a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, Respondent had not used the domain names in
connection with any type of bona fide offering of goods and services).
The Panel finds
that Respondent has no rights or legitimate interests in respect of the
disputed domain names, and thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered thirteen domain names subject to the Policy that included, in full,
Complainant’s BLOOMBERG mark. While Respondent
has not made active use of the names, it appears from Respondent’s pattern of
behavior that Respondent planned to sell the names to Complainant, or planned
to develop a website that would misleadingly appear to be sponsored by or
affiliated with Complainant. For
whatever reason, Respondent’s behavior has the effect of denying Complainant
the ability to register domain names reflecting its marks. Given the similarity between the domain
names and Complainant’s business, it appears that Respondent acted specifically
for this purpose. Such calculated
behavior demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several
infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii));
see also YAHOO! Inc. v. Syrynx, Inc.,
D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy
¶ 4(b)(ii) in Respondent's registration of two domain names incorporating
Complainant's YAHOO! mark).
Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bloomberg-co.com>, <bloomberg-inc.com>,
<bloomberg-intl.com>, <bloomberg-news.net>, <bloomberg-online.com>,
<bloomberg-usa.com>, <bloomberg-web.com>, <bloomberg-web-inc.com>,
<bloomberg-web-intl.com>, <bloomberg-web-online.com>,
<bloomberg-web-usa.com>, <bloombergweb.com>, and <bloomberg-news.biz>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 20, 2003
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