Generic Top Level Domain Name (gTLD) Decisions

Complainant is Bloomberg L.P., New York, NY, USA ("Complainant") represented by Alexander Kim. Respondent is Harold R. Brown II/Ted Waitt, Hermosa Beach, CA, USA ("Respondent").

The domain names at issue are <urn2bloomberg.com>, <urn2bloomberg.net>, and <urn2bloomberg.org>, registered with Network Solutions, 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.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 11, 2001; the Forum received a hard copy of the Complaint on June 11, 2001.

On June 22, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <urn2bloomberg.com>, <urn2bloomberg.net>, and <urn2bloomberg.org> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 June 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 2001 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@urn2bloomberg.com, postmaster@urn2bloomberg.net, and postmaster@urn2bloomberg.org 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 July 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody 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

On its face, the domain names registered by the Respondent are confusingly similar to Complainant's BLOOMBERG mark. The domain names <urn2bloomberg.com>, <urn2bloomberg.net>, and <urn2bloomberg.org> incorporate the mark BLOOMBERG in a thinly veiled attempt to garner the goodwill and recognition of the famous mark, BLOOMBERG.

There is no evidence that the Respondent has made any use, nor that he has made demonstrable preparations to use the domain names in issue. Complainant has not licensed or otherwise permitted Respondent to use its service mark, nor to apply for or use any domain name incorporating those marks.

Complainant has not licensed or otherwise permitted Respondent to use the Complainant's mark or any of the BLOOMBERG family of Marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.

To Complainant's knowledge, Respondent has never been commonly known by

BLOOMBERG and has never acquired trademark or service mark in such name.

Respondent had registered the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

B. Respondent

No Response submitted.

Complainant registered the trademark and service mark BLOOMBERG, March 18, 1997 on the Principal Register of the United States Patent and Trademark Office (hereinafter the "USPTO") as Registration No. 2,045,947.

Complainant has also registered on the Principal Register of the USPTO, and continually used in commerce, a family of at least twenty-three (23) trademarks and service marks containing the word BLOOMBERG.

In addition, Complainant has obtained registrations for marks containing the word BLOOMBERG in over seventy-five (75) countries around the world.

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 14, 1999. Complainant’s <bloomberg.com> website has been in continuous use by Complainant since its registration in 1993.

Respondent registered the <urn2bloomberg.com> domain name on June 9, 2001. The <urn2bloomberg.net> and <urn2bloomberg.org> domain names were registered by the Respondent on March 30, 2001 and April 25, 2001, respectively.

At the auction website known as <greatdomains.com>, the Respondent has offered the domain name <urn2bloomberg.com> for sale for a price of $1,000. Respondent has not used the domain names for any other purpose, and never developed an active website for any of the domain 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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Respondent’s domain names fully incorporate Complainant’s BLOOMBERG mark with the term "urn2." These domain names are not distinctive enough to avoid the confusingly similar aspect of Policy ¶ 4(a)(i). See Perot Sys. Corp. v. Brown, FA 97303 (Nat. Arb. Forum June 25, 2001) (finding the domain names <urn2perotsystems.net> and <urn2perotsystems.org> were confusingly similar to Complainant’s Perot Systems mark); see also Victoria's Secret et al v. Brown, FA 96561 (Nat. Arb. Forum Mar. 19, 2001) (finding the domain names are <urn2victoriassecret.com> and <urn2victoriassecrets.com> were confusingly similar to Complainant’s VICTORIA’S SECRET mark).

Complainant has satisfied the burden under Policy ¶ 4(a)(i).

Respondent has not undertaken any bona fide use in connection with the domain names, and Respondent’s attempt to sell a domain name confusingly similar to Complainant’s registered mark is not a legitimate or fair use. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Respondent is not licensed or in any way authorized to use Complainant’s mark and is not commonly known by any of the domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

In light of these circumstances, Respondent’s failure to develop a website for any of the domain names demonstrates Respondent’s lack of rights and legitimate interests in the domain names. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Therefore, the Panel determines that Respondent has no rights or legitimate interests in the domain name in dispute. Complainant has satisfied the burden set forth in Policy ¶ 4(a)(ii).

Respondent’s non-use of the domain names in any context, except to offer for sale for an amount in excess of out of pocket expenses, is evidence of bad faith registration and use. See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the bad faith requirement of Policy ¶ 4(a)(iii)).

Additionally, Respondent showed bad faith registration because the disputed domain names incorporate Complainant’s mark, and Respondent did know or should have known Complainant’s rights to the BLOOMBERG mark. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).

The Panel finds that Respondent registered and used the domain names at issue in bad faith pursuant to Policy ¶ 4(a)(iii).

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain names <urn2bloomberg.com>, <urn2bloomberg.net>, and <urn2bloomberg.org> be transferred from Respondent to Complainant.