Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bloomberg L.P., New York, NY, USA ("Complainant"). The Respondent is Boo Design Services a/k/a BNY Bulletin Board, Germantown, MD, USA ("Respondent").

The domain name at issue is <blooomberg.com>, registered with Network Solutions, Inc.

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

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 9, 2001; the Forum received a hard copy of the Complaint on April 10, 2001.

On April 12, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <blooomberg.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 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@blooomberg.com by e-mail.

A timely Response was received and determined to be complete on May 2, 2001.

On May 14, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

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

A. Complainant

Complainant alleges that Respondent’s 1998 <blooomberg.com> registration is confusingly similar to the trademark and service mark "BLOOMBERG " which Complainant registered in 1997 with the U.S. Patent and Trademark Office. Since Respondent has not been licensed to use the trademark and is not commonly known as "Bloomberg" or "Blooomberg," Complainant asserts that Respondent has no right or legitimate interest in the domain name at issue. Finally, Complainant says that Respondent registered and is using the domain name at issue in bad faith as evidenced by his use of the domain name at issue to attract, for commercial gain, Internet users to a site by creating a likelihood of confusion with Complainant’s registered trademark.

B. Respondent

Respondent has not submitted a response which complies with ICANN Rule 5 due to failure to state that a copy of the Response was transmitted to Complainant as required by Rule 5(b)(vii). The attempted "Response" is also inadequate for failure to satisfy the statement and signature requirements of Rule 5(b)(viii). Notwithstanding these technical defects, the Response was considered. An examination of the "Response" discloses no substantive rebuttal of a single claim made by Complainant. The only position set forth by Respondent in its own defense is a claim that an unsuccessful attempt to serve the Complaint was improperly made by Complainant using UPS to Respondent’s PO Box address. Respondent obviously received the Complaint by other means and does not so deny. Accordingly, and since they are not denied, all reasonable allegations of the Complainant will be deemed true for the purposes of this proceeding.

C. Additional Submissions

Complainant’s properly filed Additional Submission points out that Respondent actually received the Complaint via the Internet and by way of mail from the National Arbitration Forum and thus has no legitimate lack of notice argument.

Complainant registered the trademark and service mark BLOOMBERG on the Principal Register of the United States Patent and Trademark Office (hereinafter the "USPTO") on March 18, 1997 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.

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.

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. The Complainant also maintains a portfolio of over 400 domain names containing the mark, BLOOMBERG.

Bloomberg L.P. ("Bloomberg"), a Delaware limited partnership, has been in business since 1983.

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, Bloomberg has become one of the largest providers of worldwide financial news and information and related goods and services.

well-established mark. The only difference between Complainant's mark and the domain name at issue is the addition of the letter "o."

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. Respondent has never been commonly known by BLOOMBERG or BLOOOMBERG and has never acquired a trademark or service mark in such name. There is no evidence to suggest that Respondent had ever offered any product or service in relation to the disputed domain name.

At all relevant times, unless living a monastic life, Respondent has been actually aware of Complainant’s registered trademark and service mark, BLOOMBERG. By legal presumption, he has been on constructive notice of Complainant’s registered mark since 1993. Complainant’s allegations with respect to frustrated efforts to obtain the domain name at issue from Respondent are deemed true. This Panel finds that Respondent’s purpose in registering and using the domain name at issue was to deprive the owner of the registered trademark of its use and to divert the public to a site maintained or to be maintained in the future by Respondent through an accidental misspelling of Complainant’s trademark in the navigation bar of the typical browser.

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.

The domain name at issue is confusingly similar to Complainant’s registered BLOOMBERG mark because the domain name registered by Respondent merely contains an additional letter "o." See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the domain name <geociites.com> is confusingly similar to Complainant’s GEOCITIES mark).

I find that element 4(a)(i) is satisfied.

Respondent is not licensed or otherwise permitted to use Complainant’s BLOOMBERG Mark. Respondent is not commonly known by either the BLOOMBERG or BLOOOMBERG mark. See Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ("…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy"); Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant).

Respondent has never offered any product or service in relation to the disputed domain name. See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

I find that element 4(a)(ii) is satisfied.

Complainant’s undisputed allegations concerning the refusal of Respondent to transfer the domain name at issue to the corresponding registered trademark owner are evidence of bad faith. Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

I find that element 4(a)(iii) is satisfied.

It is the Decision of this Panel that the domain name <blooomberg.com>, be transferred from Respondent to Complainant.