Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bloomberg, L.P., New York, NY, USA ("Complainant"). The Respondent is Electronic Media Services, Neutral Bay, AUSTRALIA ("Respondent").

The domain names at issue are "bloombergtvasia.com" and "bloombergasia.com" registered with Melbourne IT.

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

The Honorable Charles K. McCotter, Jr. as Panelist.

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

On January 11, 2001, Melbourne IT confirmed by e-mail to the Forum that the domain names "bloombergtvasia.com" and "bloombergasia.com" are registered with Melbourne IT and that the Respondent is the current registrant of the name. Melbourne IT has verified that the Respondent is bound by the Melbourne IT 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 January 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bloombergtvasia.com and postmaster@bloombergasia.com by e-mail.

A timely response was received and determined to be complete on February 5, 2001.

On February 13, 2001, pursuant to the Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

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

A. Complainant

B. Respondent

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:

The Respondent’s domain names "bloombergasia.com" and "bloombergtvasia.com" are confusingly similar to the Complainant's mark, BLOOMBERG. The domain names incorporate the famous mark BLOOMBERG in an attempt to garner the mark’s goodwill and recognition. The combination of a geographic prefix or suffix to a famous mark does not prevent the domain name from being found confusingly similar. Net2phone Inc v. Netcall Sagl, D2000-0666 (WIPO Sept. 26, 2000) (finding as to the domain name net2phone-europe.com> that "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."); See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the registration of <cellularonechina.com> clearly violates Paragraph 4(a)(i) of the Policy in that CELLULARONE is unique and inherently distinctive coined word and that respondent had not been known as Cellularone or Cellularonechina.); CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that <cmgiasia.com> is confusingly similar to complainant's CMGI mark); and Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the domain name <wal-mart-europe.com> confusingly similar to complainant's mark, that persons perusing the website of <wal-mart-europe.com> could easily conclude that registrant of domain name was associated with Wal-Mart's operation in Europe "Geographical destinations can be irrelevant to users of the Internet."). The Respondent's registration of the domain names "bloombergtvasia.com" and "bloombergasia.com" with the addition of the suffixes "asia" and "tvasia" to a registered mark does not add any uniqueness or distinguishing features to the existing trademark "BLOOMBERG."

The Complainant has not licensed or permitted the Respondent to use the Complainant's mark, nor to apply for or use any domain name incorporating its mark. Even though the Respondent registered the domain names in November 1999, the registered domain names remained inactive. There is no evidence that the Respondent, before receiving notice of the dispute, used, or demonstrably prepared to use, the domain names in connection with a bona fide offering of services. Nor has the Respondent ever been commonly known by the disputed domain names. The Respondent has no rights or legitimate interests in respect of the domain names.

The Respondent contends that it has rights in the domain names because it is in the process of developing its infrastructure in connection with its health and education services. However, the Respondent has not alleged that these preparations were made before notice of the dispute, nor has the Respondent produced evidence of the preparations or a bona fide business plan. Nor do the domain names bear any relationship to the Respondent’s prospective business. Therefore, the Respondent has failed to show any demonstrable preparations to use the domain names. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving complainant’s "cease and desist" notice); State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be bona fide offering of goods or services"); Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to business of respondent and that respondent would only legitimately choose to use complainant’s mark in a domain name if respondent was seeking to create an impression that the two businesses were affiliated).

In analyzing the totality of circumstances, it is evident that the Respondent registered and is using the domain names in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").

Bloomberg has a high profile presence in the financial sector and is the subject of substantial consumer recognition and goodwill. The domain <bloomberg.com> was registered by the Complainant on September 29, 1993 and has been in continuous use since 1993. Under Section 22 of the United States Trademark Act, the Respondent is charged with knowledge of the Complainant’s rights in its trademark. Section 22 of the United States Trademark Act, 15 U.S.C. § 1072, states that "[r]egistration of a mark on the Principle Register . . . shall be

constructive notice of the registrant's claim of ownership thereof." Therefore, the Respondent had constructive notice of the Complainant's rights in April 2000, when the domain names containing the mark BLOOMBERG were registered. See Barney’s Inc. v. BNY Bulletin Board, D2000-0059 (WIPO April 2, 2000) (finding registration and use of domain name in bad faith based upon actual or imputed knowledge of prior registration of an identical or confusingly similar trademark together with a willingness to accept consideration for transfer of the domain name). The Complainant’s high profile presence in the financial market and the fame of the Complainant’s mark would further tend to indicate that the Respondent was aware of the Complainant’s rights.

Furthermore, attracting Internet users to a website, for commercial gain, by causing confusion with the Complainant’s mark as the sponsorship, endorsement, affiliation, or source of the website is evidence of bad faith. Policy ¶ 4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 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 Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that respondent demonstrated bad faith where respondent was aware of complainant’s famous mark when registering domain name as well as aware of the deception and confusion that would inevitably follow if he used domain name); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2^nd Cir. 2000) cert. denied, 120 S. Ct. 2719 (2000) (finding bad faith where domain name was not used until after litigation began and domain name does not consist of legal name of party). The Respondent’s domain names have the future potential of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark.

Accordingly, the Respondent registered and used the disputed domain names in bad faith.

Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(I) of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain names "bloombergtvasia.com" and "bloombergasia.com."