Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bloomberg L.P., New York, NY, USA ("Complainant"). The Respondent is C&C Multimedia, Oceanside, CA, USA ("Respondent").

The domain name at issue is "bloomsberg.com" registered with Network Solutions.

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

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 12, 2001; the Forum received a hard copy of the Complaint on February 12, 2001.

On February 15, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "bloomsberg.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 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 February 15, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 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@bloomsberg.com by e-mail.

A timely response was received and determined to be complete on March 6, 2001.

Complainant submitted a timely additional submission in compliance with Forum Supplemental Rule ("Supp. Rule") 7 on March 13, 2001.

Respondent submitted an additional submission that was not in compliance with Supp. Rule 7 after the deadline and with out the requisite fee.

On March 15, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. The domain name in issue, "bloomsberg.com" is confusingly similar to Complainant’s famous and distinctive mark, "BLOOMBERG," which was registered with the United States Patent and Trademark Office on March 18, 1997, for computers and computer programs, etc. (International Class 9); publications, etc. (International Class 16); financial services, et. (International Class 36); radio and television broadcasting, etc. (International Class 38); entertainment services, etc. (International Class 44); and news reporting services (International Class 42).

2. Twenty-three additional marks containing the name BLOOMBERG also have been registered with the United States Patent and Trademark Office, and there have been registrations of the name BLOOMBERG in seventy-five foreign countries.

3. Bloomberg is a worldwide leading financial source with over 4,500 employees serving clients in over 100 countries.

4. The domain name in issue simply adds an "s" to Complainant’s mark.

5. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s mark.

6. Bloomberg LP is named after its founder, Michael R. Bloomberg, who organized the company in 1983. Clearly, Respondent was fully aware of the mark, apart from constructive notice, before registering the domain name in issue.

7. The registration and use of the domain name are in bad faith because there is a likelihood of confusion with Complainant’s marks, as to the source, sponsorship, affiliation and/or endorsement. Such registration and use, moreover, would constitute a false description or registration as to a relationship between Complainant and Respondent.

B. Respondent

1. Respondent has a legitimate interest in the domain name in issue as his family, which included a former chief of police and a World War II hero, is from Bloomsberg, Pennsylvania.

2. The domain name is intended to be a community and history site.

3. Respondent had not considered selling the domain name, but only responded to an unsolicited offer.

4. The domain name currently resolves to Respondent’s flagship website, "GoBot.com," which is following a practice customary among web developers.

5. Respondent has a legitimate interest in and rights to the domain name which is not fictitious, and which was registered for a legitimate non-commercial purpose. Thus, the domain name was not registered and is not being used in bad faith.

1. Complainant’s mark was registered with the United States Patent and Trademark Office on March 18, 1997. The mark is a surname that has acquired a famous and distinctive secondary meaning. (See Avery Dennison Corporation v. Sumpton (9^th Cir. 1999) [1999] USCA9 436; 189 F.3d 868, 877, and the authorities therein cited.)

2. The domain name in issue was registered by Respondent on August 6, 1999.

3. Complainant has used its mark since 1983, and it has become world famous in the business of computer services, publications, financial services, radio and television broadcasting, entertainment services, and news reporting services.

4. There is no city or town in Pennsylvania named "Bloomsberg." There is a city in Pennsylvania named "Bloomsburg."

5. It follows that it is not true that Respondent’s motivation was because of a family interest and to establish a community and historical website. Rather, it is found that Repondent registered the domain name in issue to trade on Respondent’s famous and distinctive mark.

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.

It is difficult to determine credibility only from a written record.

Nevertheless, the Panelist here can only come to one conclusion, and that is that Respondent simply was either grossly negligent or he has not been truthful about his motivation in registering the domain name in issue.

Respondent claims an interest in the name "Bloomsberg" because his family comes from that city, and his purpose was to establish a non-commercial community and historical website. But even a school boy writing a term paper would immediately find that there was no "Bloomsberg, Pennsylvania," but that there is an industrial city in Eastern Pennsylvania named "Bloomsburg, Pennsylvania."

It is established that in determining credibility, a witness false in one part of his testimony is to be distrusted in others, and the entire testimony of a witness who willfully has testified falsely on a material point may be rejected.

The Panelist has determined that Respondent has not been forthright with respect to the foundation of his case. Accordingly, Respondent’s defense herein made must be considered in light of Respondent’s shaken credibility.

Respondent does not dispute that the domain name in issue is confusingly similar to Complainant’s mark, and he could not.

The only difference between Complainant’s famous mark and the domain name in issue is that an "s" has been added. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an ‘s’ to the end of Complainant’s mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").

Respondent has no legitimate interest or rights to the domain name in issue, because, as will be seen, he was not truthful about his motivation and, thus, has acted in bad faith. If he wished to perpetuate his family history, he would have used the domain name which contained the name "Bloomsburg." It is reasonable to infer, accordingly, that his real motivation was to trade on Complainant’s famous and distinctive mark and not for a legitimate or fair use.

In light of Respondent’s lack of credibility, the Panelist has concluded that Respondent’s real motivation in registering the domain name in issue was intentionally to attract, for commercial gain, Internet users to its website, 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 website. 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 website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website 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).

Section 4b of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4b provides:

The words "source, sponsorship, affiliation, or endorsement" are particularly apt here. Inevitably, the Panelist believes that consumers would conclude that the domain name in issue was endorsed and sponsored by Complainant.

In addition to the demonstration of bad faith by the application of subparagraph (iv) of Section 4b of the Policy, there is a legal presumption of bad faith, when Respondent clearly was aware, actually or constructively, of Complainant’s famous and distinctive trademark. 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).

Respondent registered and is using the domain name in issue in bad faith.

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name "bloomsberg.com" registered by Respondent C & C Multimedia, shall be, and the same is, transferred to Complainant Bloomberg LP.