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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Bloomberg L.P. v Kevin Scharf
Claim Number: FA0012000096264
PARTIES
The Complainant is Bloomberg L.P., New York, NY, USA ("Complainant"). The Respondent is Kevin Scharf, Santa Barbara, CA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is bloombergchannel.com registered with Network Solutions, Inc.
PANEL
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.
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
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 11, 2000.
On December 13, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name bloombergchannel.com is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@bloombergchannel.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.
On January 9, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.
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 Forumís Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIESí CONTENTIONS
A. Complainant
Complainant alleges the following with respect to the domain name at issue:
To Complainant's knowledge, Respondent has never been commonly known by BLOOMBERG and has never acquired trademark or service mark in such name.
Respondent is not making a legitimate, noncommercial or fair use of the domain name bloombergchannel.com. On or about October 26, 2000, the domain name bloombergchannel.com was discovered to be offered for sale to the highest bidder at Afternic.com. On November 10, 2000, Afternic.com responded to the Complainant's cease and desist letter by stating that it was giving three (3) days for the Respondent to present evidence of right to sell the domain name. The Respondent failed to respond to both the Complainant and to Afternic.com, and consequently the domain name was removed from the auction block.
Respondent has no legitimate interest in the registered domain names; instead, within three weeks of registering the domain name, the Respondent attempted to auction it, starting bid at $10,000.00 . Respondent has no intention of acquiring trade mark rights in the domain names; Respondent's true intention is to create consumer confusion and attract or divert traffic, for financial gain, by usurping goodwill and recognition associated with the BLOOMBERG mark.
Bloomberg L.P. is named after Michael R. Bloomberg, who founded the company in 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 name.
To Complainant's knowledge, no evidence exists to support the conclusion that the above listed domain names were registered in good faith.
Further, Section 22 of the United States Trademark Act, 15 U.S.C. ß 1072, states that
"[r]egistration of a mark on the Principal Register Ö shall be constructive notice of the registrant's claim of ownership thereof." Thus, by virtue of the prior registration of Complainant's mark on the Principal Register of the USPTO, as a matter of United States trademark law, Respondent was constructively on notice of Complainant's rights in Complainant's Mark in October 2000, when the domain name containing the mark BLOOMBERG was registered.
The Respondent's registration of the domain names bloombergchannel.com is a blatant attempt to profit from selling a domain name related to the well known trademark BLOOMBERG. Furthermore, the Respondent is attempting to create customer confusion and attract, for financial gain, Internet users looking for bloomberg.com or related services and products from the Complainant. The Complainant also notes that the Respondent has registered other domain names which are similar to other famous trademarks and service marks such as disneystoreonline.com, cbs2news.com and ticketmasterevents.com.
The Respondent attempted to sell the domain name bloombergchannel.com about three weeks after registering the domain name. The starting bid for the domain name was $10,000.00. The fact that the Respondent placed the domain name on auction so soon after registering the domain name leads to the conclusion that the Respondent had registered the domain name in bad faith by having had no intention to develop any legitimate business interest associated with the domain name, but only to profit by selling the domain name to the highest bidder.
The Respondent knew when he/she registered bloomberg.com domain name that the Complainant was commonly known by the name BLOOMBERG. The Respondent seems to have registered the domain name in order to place it on an auction block. In the alternative, the Respondent registered the domain name to prevent the Complainant from using the domain name to offer broadcasting services on the Internet. When taking the totality of the Respondent's actions, the Respondent has engaged in a pattern of conduct, in which he/she incorporates famous marks into a domain name, to create customer confusion in hopes of financial gain.
Taken together, the above facts lead to the conclusion that Respondent registered the above domain names in a bad faith attempt to unjustly enrich him/herself by auctioning the domain name bloombergchannel.com and furthermore to confuse consumers, divert consumer traffic from the genuine bloomberg.com and related Web sites, and thereby disrupt the business of Bloomberg.
B. Respondent
Respondent did not submit a response in this matter.
FINDINGS
1. The BLOOMBERG Trademark
Complainant registered the trade mark and service mark BLOOMBERG, March 18, 1997 on the Principal Register of the United States Patent and Trademark Office as Registration No. 2,045,947 for:
"computers, portable computers and computer programs for use in accessing information database, for performing personal computing applications in the areas of news, business, finance, current events, the entertainment and sports industries, human interest stories, securities, securities markets, the energy and asphalt industries; for analyzing international securities markets, and analyzing and reporting on international business and financial news; software for interactive electronic communication about securities" in International class 9;
"publications, namely, reports, directories, brochures, leaflets, newsletters, booklets, pamphlets, post cards, flyers, magazine supplements to newspapers, magazines and trade and professional books in the field of news, business, finance, current events, entertainment, sports, human interest stories, securities, securities markets and the energy and asphalt industries" in International Class 16;
"financial services in the nature of providing a securities trading system; electronically providing the services of a securities broker; objectively rating securities; information services relating to finance and news, including providing analyses of securities markets and models that objectively rate securities" in International Class 36;
"radio and television broadcasting; providing interactive telephone guides to public companies and electronic dial-for-information services" in International Class 38;
"entertainment services in the nature of producing and distributing programming distributed over broadcast, television, radio, cable, and direct satellite in the fields of news, business, finance, current events, sports, human interest stories, securities, securities markets and the energy and asphalt industries" in International Class 41;
"news reporting services, namely, gathering and dissemination of news by computer; providing interactive, electronic and audio and visual communication and information services published over, by or through a network distribution system providing information, interviews and commentary related to news, business, finance, current events, entertainment, sports, human interest stories, securities, securities markets and the energy and asphalt industries, computer services, namely, providing on-line publications in the nature of reports, directories, reference materials, magazines and trade and professional books related to news, business, finance, current events, entertainment, sports, human interest stories, securities, securities markets and the energy and asphalt industries" in International Class 42.
2. Other BLOOMBERG Trademark Registrations
In addition to Complainant's Mark, Complainant has registered on the Principal Register of the USPTO, 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.
3. BLOOMBERG Domain name
Complainant is the owner of the following domain names: bloomberg.com registered
September 29, 1993; bloomberg.net registered March 8, 1997; and bloomberg.org registered December 14, 1999. The domain name bloomberg.com has been in continuous use by Complainant since its registration in 1993.
4. The "BLOOMBERG" Trade name
Complainant is the owner and bona fide senior user of the BLOOMBERG trade name.
Bloomberg L.P. ("Bloomberg"), a Delaware limited partnership, has been in business since 1983.
Respondent registered the disputed domain name bloombergchannel.com with Network Solutions Inc. on October 5, 2000. On October 26, 2000, the domain name was discovered to be for sale at the auction site afternic.com.
DISCUSSION
Paragraph 15(a) of 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.
Identical and/or Confusingly Similar
The disputed domain name, bloombergchannel.com, is confusingly similar to Complainantís BLOOMBERG marks. The addition of the generic word "channel" does not negate the confusing similarity. See Nokia Corp. v. Nokiagirls.com a.k.a IBCC
D2000-0102, (WIPO April 18, 2000) (finding that the addition of a general noun to a registered mark in a domain name is of limited effect in distinguishing domain name from the trademark related to a domain name nokiagirls.com); Chase Manhattan Corp. et al. v. Whitely D2000-0346, (WIPO June 12, 2000) (finding the respondent's registration of domain name chasemerchantservices.com by a credit card operating company is "inconceivable to this Panel that Respondent did not have in mind Complainant's famous, long-established and subsisting trademarks"); Inter-IKEA Systems B.V. v. McLaughlin Mobility D2000-0499, (WIPO Aug. 1, 2000) (finding that upon registration of the domain name ikeacar.com Respondent "cannot reasonably have been unaware of the fame of the IKEA trade mark at the time of adoption of its domain name, and could have easily, without distorting its 'sales message', avoided conflict with the complainant by adopting an alternative to the 'ikea' component of its domain name").
Rights or Legitimate Interests
Respondent has failed to demonstrate any rights or legitimate interests with respect to the domain name bloombergchannel.com. Respondentís only apparent use of the domain name has been to offer it for sale at an auction site, with a starting bid of $10,000. Such use is not a bona fide offering of goods or services under ICANN Policy 4(c)(i). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Respondent is not commonly known by the domain name bloomberchannel.com. Respondentís use of the domain name is commercial and not fair use. Thus, Respondent has no rights or legitimate interests in the domain name bloombergchannel.com.
Registration and Use in Bad Faith
By registering a domain name incorporating the well-known BLOOMBERG mark and soon thereafter offering it for sale at the afternic.com auction site, Respondent has evidenced registration and use in bad faith.
Based on the strength and renown of the BLOOMBERG mark, registration and use of a domain name identical or confusingly similar to such mark, without a good faith explanation, raises an inference of 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 very use by someone with no connection with the product suggests opportunistic bad faith).
Further, offering a bloombergchannel.com for sale at the auction site afternic.com, only a few weeks after registration, indicates bad faith according to ICANN Policy 4(b)(i). See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).
DECISION
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 name bloombergchannel.com be transferred from the Respondent to the Complainant.
Hon. James A. Carmody, Panelist
Dated: January 13, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/69.html