Generic Top Level Domain Name (gTLD) Decisions

The Complainant, Bloomberg, L.P., is a Delaware limited partnership with a variety of news and financial information and related goods and services, has been in business since 1983, and is recognized worldwide. The Complainant has created significant goodwill and widespread consumer recognition through substantial advertising and promotion of its mark, trade name, domain names.

In 1997, the Complainant registered the trademark and service mark BLOOMBERG with the United States Patent and Trademark Office. The Complainant currently holds a family of at least 23 trademarks and service marks in the United States and has obtained registrations for marks in over 75 countries.

Through advertising and promotion of Complainant’s mark, the trade name and various domain names have created goodwill and widespread consumer recognition.

The Respondent also wished to develop its own television and radio network that would broadcast and web-cast over the Internet. Programming would include the development of an international news organization and a news and marketing organization. It is also the Respondent’s desire to create turnkey business to business units to be sold for profit providing highly marketable incorporated names, associated domain names and protected trademarks.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Respondent has not presented any evidence to convince this Panelist that it has ever been commonly known by "Bloomberg" and has never acquired a trademark or service mark in such name, or that the Complainant licensed or gave its permission to the Respondent to use its famous mark. Even though the Respondent has a registered trademark, it does not mean that it has the right to use the Complainant’s mark in conjunction with their mark without permission or license. Also, the Respondent has not used the domain name in connection with a bona fide offer of goods or services or for non-commercial purposes. See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question)

By its own admission in its business plan, it would be necessary for the Respondent to acquire a large amount of Top Level Domain Names which would be linked to their customer’s websites, and to create turnkey business units to be sold at an excellent profit, providing highly marketable incorporated names, associated domain names and protected trademarks. It appears from the evidence presented that the Respondent’s pattern is to add the word "now" to a famous mark for the purpose of transferring the domain name registration for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. See Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the mark was "most likely an excuse for camouflaging the purpose of trafficking with the domain name").

In addition, it would appear that the Respondent registered the domain names at issue to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. By Respondent’s own admission, it wishes to enter the international news market, much the same as the Complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Finally, Complainant’s reputation and its substantial consumer recognition and goodwill would lead one to believe that Respondent had to have been aware of Complainant’s mark prior to registering the domain names at issue. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this Panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name "bloombergnow.com" be transferred from the Respondent to the Complainant.