Generic Top Level Domain Name (gTLD) Decisions

Complainant is Alexander Kim Bloomberg L.P., New York, NY, USA ("Complainant") represented by Alexander Kim, of Bloomberg L.P. Respondent is G. Sandhu, Slough, Berkshire, Great Britain ("Respondent") represented by Jack Khurana, of Willmett & Co.

The domain names at issue are bloombergmoney.tv and bloombergnews.tv, registered with dotTV Corporation.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 11, 2000; the Forum received a hard copy of the Complaint on December 6, 2000.

On December 12, 2000, dotTV Corporation confirmed by e-mail to the Forum that the domain names bloombergmoney.tv and bloombergnews.tv are registered with dotTV Corporation and that Respondent is the current registrant of the name and dotTV Corporation has verified that Respondent is bound by the dotTV Corporation 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 December 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 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, to postmaster@bloombergmoney.tv and to postmaster@bloombergnews.tv by e-mail.

A timely response was received and determined to be complete on January 18, 2001.

On January 29, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Complainant requests that the domain names be transferred from Respondent to Complainant.

Respondent urges that Respondent did not seek to infringe upon the goodwill and recognition of an established mark of Complainant when Respondent filed the two domain names in issue here and that Respondent did not act in bad faith. Respondent does not address two other required matters: (1) whether the domain names in issue are identical to or confusingly similar to a mark in which Complainant has rights, and (2) whether or not Respondent has rights to or legitimate interests in the mark used to create the domain names in issue here.

It is undisputed that Complainant Bloomberg L. P., which has been in business since 1983, holds some twenty-three (23) trade and service marks incorporating the terms BLOOMBERG, BLOOMBERG NEWS, BLOOMBERG TELEVISION, BLOOMBERG INFORMATION TV, BLOOMBERG, U.K.; BLOOMBERG MONEY, U.K. AND BLOOMBERG INFORMATION TV, U.K., each of which has been registered with the appropriate authorities in the United States and in the United Kingdom. Complainant has registered BLOOMBERG in seventy-five (75) countries around the world. In addition, Complainant registered several versions of the mark Bloomberg as domain names. The Registrations expressed a purpose of providing services under the mark that are generally related to computers, publications, financial services, radio and television broadcasting, entertainment services and news reporting services. Headquartered in New York City, the company employs more than 4,500 people and serves clients in more than 100 countries from nine sales offices worldwide, two data centers and 78 news bureaus.

Respondent registered bloombergnews.tv and bloombergmoney.tv as domain names on August 30, 2000. Complainant sent a cease and desist letter on November 1, 2000 and received the promise of a response from Respondent’s attorney. No evidence shows such a response.

Complainant asserts and Respondent does not deny that Complainant has not licensed or otherwise permitted Respondent to use its mark and further that Respondent is not generally known by Complainant’s mark. Given the general widespread nature of Complainant’s business and ownership of the mark, Bloomberg; and given the fact that Respondent’s registration references the same type of business that Complainant is in by adding to the mark the words "money.tv" and "news.tv", it is clear that Respondent knew that Bloomberg was a mark that belonged to someone in that type of business, that Respondent did not own the mark Bloomberg, and that Respondent is not commonly known as Bloomberg.

It is further admitted by Respondent, G. Sandhu, that no use or development has been made of the domain names and that no active page has been developed for them and it may be inferred from the facts, on their face, that Respondent registered these domain names for some other purpose. In fact, the mark is so obviously connected to Complainant and so obviously not connected to Respondent that it permits the inference that Respondent acted in opportunistic bad faith in registering the domain names using the Bloomberg mark. See Charles Jourdan Holding AG v. AAIM (D2000-0403) (WIPO June 27, 2000. (finding that the domain name in question is "so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.")

It is disingenuous for Respondent to suggest that it is permissible to register a domain name using another’s mark and hold it for some nebulous "family and friends" use. Failure to develop a domain name is some evidence of bad faith as is the attempt to hold a domain name, using the mark of another, to prevent that entity from using its own mark in a name. See Barney’s Inc. v. BNY Bulletin Board (D2000-0059) (WIPO Apr. 2, 2000) (finding that "some bona fide activity using the domain name must be undertaken or content placed upon a related web site to establish … rights or legitimate interests.")

These admissions by Respondent of registration and non-use permit the inference that Respondent acted in bad faith to prevent the lawful owner of a mark from utilizing its mark in a domain name.

To prevail on a complaint seeking an order to transfer a domain name from the filing party, Complainant must allege and prove three things under ICANN Policy:

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."

Respondent’s submission does not deny that Complainant has rights in the BLOOMBERG marks. Nor does Respondent deny that the disputed domain names are confusingly similar to Complainant’s marks.

Complainant, Bloomberg L.P., originally registered the trademark and service mark BLOOMBERG on March 18, 1997. Currently, Complainant has registered at least twenty-three (23) trademarks and service marks containing the word BLOOMBERG on the Principal Register. Internationally, Complainant has registered its various BLOOMBERG marks in seventy-five (75) countries. "Bloomberg Money" is a monthly magazine published by Complainant. "Bloomberg News TV" is a news service that is broadcasted worldwide.

Based on the evidence presented, the Panel may conclude that the disputed domain names are identical or confusingly similar to Complainant’s BLOOMBERG marks. See VeriSign, Inc. v. Nandini Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the domain names verisignindia.com and verisignindia.net where Respondent added the word "India" to Complainant’s VERISIGN mark).

The Panel accordingly finds that the domain names at issue here are identical to or confusingly similar to Complainant’s mark. ICANN Policy ¶ 4(a)(i)

To Prevail under ICANN Policy ¶ 4(a)(ii) Complainant must show that it has rights to or legitimate interests in the domain names. Where a domain name uses the mark of another, Respondent must also show rights to or legitimate interest in the words used to identify what Respondent contends are private web pages for Respondent’s family and friends. Respondent does not assert or show any rights to or legitimate interests in the Bloomberg marks that would satisfy ICANN Policy 4(c).

Respondent’s only proposed use for the domain names is to provide for family and friends. Respondent has not provided evidence of any use or demonstrable preparations to use the disputed domain names. See Open Systems Computing AS v. Alberto degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).

It is obvious on the face of the documents that Respondent is not commonly known by the disputed domain names bloombergmoney.tv or bloombergnews.tv, and therefore cannot satisfy the requirement of ICANN Policy 4(c)(ii). 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).

Respondent cannot demonstrate rights or a legitimate interest under ICANN Policy 4(c)(iii) since it is not making any use of the disputed domain names, noncommercial, commercial or otherwise. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where the Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).

While Respondent is free to develop web sites for use by friends and family, Respondent may not identify those web sites with domain names consisting of another’s trademark or service mark. See Robo Enterprises, Inc. v. Orvin Tobiason, FA 95857 (Nat. Arb. Forum, Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest in the domain name roboenterprises-investors.com, noting that while the content of Respondent’s web site may enjoy first amendment and fair use protection, those protections do not equate to rights or a legitimate interest "with respect to [a] domain name," which is confusingly similar to another’s trademark).

The Panel therefore finds that Complainant has established rights to and legitimate interests in the mark that was used to create the domain names at issue here and that Respondent has none.

Respondent denies registration and use in bad faith. Specifically, Respondent asserts that when Respondent registered the domain name, it was reasonable to assume that Complainant did not want to register it, since it had not already done so. Respondent asks the Panel to not penalize Respondent for Complainant’s failure to register every desired domain name using its mark. Next, Respondent argues that it cannot be found to have used the domain name in bad faith, since it has made NO USE of the domain name.

Complainant’s BLOOMGERG marks are well known and Respondent admits to having some knowledge of Complainant’s other filings using the name. Absent some credible explanation by Respondent for why Respondent registered the disputed domain names, there is little reason to believe that the domain names were not registered in bad faith. See America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that "gameicq.com" and "gameicq.net" are obviously connected with services provided with the world-wide business of ICQ and the registration by someone with no connection with the product suggests opportunistic bad faith).

While it is true that Complainant did not seek to register the domain names at issue, Complainant’s lack of action does not mean that others may register domain names that are confusingly similar to and that use Complainant’s marks. See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO September 19, 2000) (noting that "trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves").

While it may be true that Respondent has not used the domain names at issue in the traditional sense, such a technicality should not permit a Respondent to register another’s trademark as a domain name. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy paragraph 4(b)(iv) even though Respondent has not used the domain name because "It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy"). See also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose)

Accordingly, the Panel finds that evidence permits the inference that Respondent’s registration and non-use of the domain name in this case was in bad faith. ICANN Policy ¶ 4(a)(iii)

Based on the foregoing findings, the Panel concludes that Complainant is entitled to the requested relief; and it is accordingly Ordered that the domain names bloombergmoney.tv and bloombergnews.tv should be and are hereby transferred from Respondent to Complainant.