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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Bloomberg L.P. v Bloomberg Sports
Claim Number: FA0102000096639
PARTIES
The Complainant is Bloomberg L.P., New York, NY, USA ("Complainant"). The Respondent is Bloomberg Sports, Sioux Falls, SD, USA ("Respondent") represented by Todd D. Epp, of Lynn, Jackson, Shultz, & Lebrun.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "bloombergproductions.com", "bloombergsports.com", "bloombergsportsinfo.com", "bloombergsportsnews.com", "bloombergsportspicks.com", "michaelrbloomberg.com", registered with Network Solutions.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 13, 2001; the Forum received a hard copy of the Complaint on February 15, 2001.
On February 15, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "bloombergproductions.com", "bloombergsports.com", "bloombergsportsinfo.com", "bloombergsportsnews.com", "bloombergsportspicks.com", "michaelrbloomberg.com" are 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 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 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@bloombergproductions.com, bloombergsports.com, bloombergsportsinfo.com, bloombergsportsnews.com, bloombergsportspicks.com, michaelrbloomberg.com by e-mail.
A timely response was received and determined to be complete on March 7, 2001.
On March 19, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to Complainant’s Mark, Trade Name and Michael R. Bloomberg’s name; that the Respondent has no rights or legitimate interest in the disputed domain names and that the Respondent registered the domain names in bad faith.
B. Respondent
The Respondent contends that the disputed domain names are not confusingly similar to the trade or service marks in which the Complainant has rights; that the Respondent has rights and interests in the domains at issue; and that the Respondent did not register the domain names in bad faith.
C. Additional Submissions
The Complainant filed a Rebuttal to Respondent’s Response stating that Respondent failed to show that the disputed domain names are not confusingly similar to its famous mark; that Respondent failed to produce any evidence of right or legitimate interest in the domain names; that the Respondent failed to dispute evidences that he registered and used the domain names in bad faith.
The Respondent filed a Supplemental Rebuttal Response to Complainant’s Rebuttal stating that the marks are not confusingly similar; that Respondent is not a name thief; that there is no evidence of untruthfulness on the part of the Respondent; that it is not so that the Respondent’s registrations are prima facie confusingly similar to Complainant’s; that the Respondent is not engaged in illegal behavior; and that Respondent did not seek out the sale of the domain names.
FINDINGS
The Complainant, Bloomberg, L.P., a Delaware limited partnership with a variety of news, financial, and service products, has been in business since 1983, and is recognized worldwide. The company was founded by Michael R. Bloomberg, who has been the company’s chief operating officer since it’s inception. Mr. Bloomberg is one of the most recognized names in worldwide financial and news services. The Complainant has created significant goodwill and widespread consumer recognition though substantial advertising and promotion of its mark, trade name, domain names and Michael R. Bloomberg’s name.
In 1997, the Complainant registered the trademark and service mark BLOOMBERG with the United States Patent and Trademark Office for use in offering goods and services ranging from computers and computer programs to various media sources. Five of Complainant’s seven registration descriptions allow for use in the sports industry.
The Complainant has registered and continually used in commerce, a family of at least 23 trademarks and service marks containing the word BLOOMBERG, and has obtained registrations for marks containing the word BLOOMBERG in over 75 countries around the world.
The Respondent states that he is a businessman who provides sports information. It is stated in the Respondent’s response that he is an accomplished billiard player and golfer and is known throughout South Dakota. Respondent also claims that his family is nationally famous for its billiards prowess. It is stated in the Response that the Respondent’s father was involved in the billiard hall and billiard supply business and that Respondent and his father were about to embark on providing billiard supply services via the Internet.
DISCUSSION
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.
Identical and/or Confusingly Similar
The Respondent does not dispute the Complainant’s trademark registrations for BLOOMBERG, nor does it dispute that the Complainant provides sports related news, analysis and other sports related information.
The Complainant does not dispute the Respondent’s right to use of his own last name in his own business; however, with a mark as strong as the Complainant’s , and the fact that the name was merely combined with generic words to create the domain names, it would not be unreasonable to assume that an Internet user may think that the domain names are somehow affiliated with Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n]either the addition of an ordinary descriptive word¼nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy 4(a)(i) is satisfied); See also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
Rights or Legitimate Interests
Even though the Respondent’s last name is Bloomberg, which is the same as the Complainant’s famous mark, it may not give the second mark user the right to use his own name to engage in unfair competition. The Respondent has not provided any evidence that he had been in a business with his name associated with selling of goods or services. It is also noted that the Respondent’s father’s business was known as "Radak Billiard Supply" not incorporating his surname in the business name. Further, the Respondent states he wanted to start websites to help sales in his new pool hall known as "Bloomberg Gold Rush Casino" and, if this was the case, why did he not register the domain name "Bloomberggoldrushcasino.com?"
The Respondent has not provided any evidence that he has ever been commonly known by the domain names, that there are no clear goods or services provided by the alleged business plan, and that there is no showing of proof that the Respondent has applied for or obtained any trademark rights in the disputed domain names. Additionally, the Respondent did not distinguish his business form from that of the Complainant’s by posting disclaimers or similar note to the public to reduce confusion. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Registration and Use in Bad Faith
By the Respondent’s own admission, he and his family were engaged in the billiard business. None of the domain names contain any reference to billiards or pool halls, nor equipment or supplies used in this sport. This, coupled with the registration of "michaelrbloomberg.com" (which the Respondent claims was registered by his "webmaster" in error and has agreed to its transfer to the Complainant), the lack of disclaimers or notices to the public to stating that he was not affiliated with the Complainant, creates a reasonable assumption that the Respondent’s registration and use of the domain names were primarily to cause confusion in the minds of the public and to profit from the confusion by attracting Internet users looking for Complainant’s goods and services. 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).
DECISION
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain names "bloombergproductions.com", "bloombergsports.com", "bloombergsportsinfo.com", "bloombergsportsnews.com", "bloombergsportspicks.com", "michaelrbloomberg.com" be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf (Ret.)
Dated: April 2, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/674.html