Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bloomberg L.P., New York, NY, USA ("Complainant"). The Respondent is Sein M.D., Taegu, South Korea ("Respondent").

The domain names at issue are "bloombergchina.com" and "bloombergjapan.com", registered with Tucows.

On February 28, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he acted independently and impartially and to the best of his knowledge, 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 January 24, 2001; the Forum received a hard copy of the Complaint on January 29, 2001.

On January 24, 2001, Tucows confirmed by e-mail to the Forum that the domain names "bloombergchina.com" and "bloombergjapan.com" are registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 February 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 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@bloombergchina.com and postmaster@bloombergjapan.com 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.

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 the Respondent.

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

A. Complainant

B. Respondent

The Respondent did not put forward a reply in this proceeding.

on the Principal Register of the United States Patent and Trademark Office as Registration No. 2,045,947.

The complaint is based upon the trademark and service mark BLOOMBERG, U.S. Reg. No. 2,045,947, and trademark and service mark BLOOMBERG, South Korea, Reg. Nos. 54991, 44948, 43009, 44947, 49368, 389612, and 389613.

In addition to Complainant's BLOOMBERG mark, Complainant has registered on the Principal Register of the U.S. PTO, 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.

September 29, 1993; <bloomberg.net> registered March 8, 1997; and <bloomberg.org> registered December 14, 1999. <Bloomberg.com> has been in continuous use by Complainant since its registration in 1993. <Bloomberg.co.kr> was registered on April 2, 1999.

Complainant's substantial advertising and promotion of Complainant's mark, its BLOOMBERG family of marks, its Bloomberg trade name and its domain names have created significant goodwill and widespread consumer recognition. Since its inception in 1983, Complainant has become one of the largest providers of worldwide financial news and information and related goods and services. Complainant is recognized and trusted worldwide as a leading financial information and analysis source. Complainant has over 4500 employees. Complainant is headquartered in New York and serves clients in over 100 countries with nine sales offices, two data centers, and seventy-eight news bureaus worldwide.

Bloomberg L.P. is engaged in business activities worldwide, and in Asia, including but not limited to China and Japan.

The Respondent registered the domain names on May 13, 2000. There is no evidence that the Respondent has made any use nor that he has made demonstrable preparations to use the domain names.

Complainant sent Respondent a letter on December 7, 2000, revealing its rights in the domain name. Respondent failed to reply.

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."

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.

On its face, the domain names registered by the Respondent are confusingly similar to Complainant's mark, BLOOMBERG. The domain names incorporate the mark BLOOMBERG in addition to the words "CHINA" and "JAPAN." The mere addition of a geographic identifier does not render the distinctive trademark such as BLOOMBERG diminished, nor does an addition of the words "CHINA" and "JAPAN" controvert the ownership of trademark or service mark rights in the Complainant. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to complainant’s CMGI mark); Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."). Therefore, the Panel finds that the domain names are confusingly similar to Complainant’s mark.

1983. Because "Bloomberg" has no meaning other than to identify Michael R. Bloomberg and his company, it is unlikely Respondent independently arrived at the Bloomberg domain names. 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. Policy ¶ 4(c)(ii). In addition, the Respondent failed to provide any evidence showing legitimate commercial or non-commercial interests in the domain names. Policy ¶ 4(c)(i), (iii). See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the 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.

The Respondent's registration of the domain names <bloombergchina.com> and <bloombergjapan.com>, with the addition of suffixes "China" and "Japan" do not add any uniqueness nor any distinguishing features to the existing trademark BLOOMBERG. Therefore, the Panel can only conclude that the Respondent registered the disputed domain names primarily for the purpose of disrupting Bloomberg's business, and/or the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. Policy ¶ 4(b). Even though Respondent has currently made no use of the domain name, any such use in the future will inevitably create the confusion described in 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"). Therefore, the Panel concludes that the domain names were registered and used in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names "bloombergchina.com" and "bloombergjapan.com" be transferred from the

Respondent to the Complainant.