Generic Top Level Domain Name (gTLD) Decisions

DECISION

Bloomberg LP v. Triple E Holdings Limited

Claim Number: FA0210000127715

PARTIES

Complainant is Bloomberg LP, New York, NY (“Complainant”) represented by Alexander Kim, of Bloomberg LP.  Respondent is Triple E Holdings Limited, Richfield, MN (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bloombberg.com>, <bloomborg.com>, <bloomberge.com>, registered with BulkRegister.com, Inc.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 9, 2002; the Forum received a hard copy of the Complaint on October 14, 2002.

On October 9, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain names <bloombberg.com>, <bloomborg.com> and <bloomberge.com> are registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the names.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, Inc. 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 October 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 4, 2002 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@bloombberg.com, postmaster@bloomborg.com, and postmaster@bloomberge.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 December 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <bloombberg.com>, <bloomborg.com> and <bloomberge.com> domain names are confusingly similar to Complainant’s registered BLOOMBERG mark.

2. Respondent does not have rights to or legitimate interests in the <bloombberg.com>, <bloomborg.com> and <bloomberge.com> domain names.

3. Respondent registered and used the <bloombberg.com>, <bloomborg.com> and <bloomberge.com> domain names in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the owner of the BLOOMBERG mark (Reg. No. 2,045,947), which was registered on the Principle Register of the United States Patent and Trademark Office (“USTPO”). The BLOOMBERG mark and trade name represents Complainant as a Delaware limited partnership, which has been in business since 1983.

Complainant uses its BLOOMBERG mark along with twenty-three (23) other marks domestically, and numerous other marks in over seventy-five (75) countries internationally. Complainant’s substantial advertising and promotion of the mark have created widespread consumer recognition. Since Complainant’s inception, Complainant has become a leader in financial news and information and related goods and services. Complainant employs over 8,000 employees in over 100 offices worldwide.

Complainant maintains the domain names: <bloomberg.com>; <bloomberg.net>; and <bloomberg.org>. Moreover, Complainant maintains over 400 other domain names incorporating the BLOOMBERG mark.

Respondent registered the disputed domain name <bloombberg.com> on April 30, 2002, and registered both <bloomborg.com> and <bloomberge.com> on May 23, 2002. All three of Respondent’s disputed domain names, <bloombberg.com>, <bloomborg.com> and <bloomberge.com> redirect Internet users to <omegafind.com>. This website is owned and operated by Respondent.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established rights in the BLOOMBERG mark through registration with the USTPO and subsequent continuous use of the mark.

All three of the disputed domain names, <bloombberg.com>, <bloomborg.com> and <bloomberge.com> are variations of Complainant’s registered mark, BLOOMBERG. Respondent is simply altering Complainant’s mark slightly by way of adding a letter, or merely changing the spelling in order to prosper off of Internet users who are in all actuality intending to visit Complainant’s website. The simple variations do not create a distinct name from that of Complainant. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.

Rights or Legitimate Interests

Respondent has not submitted a reply to Complainant’s allegations, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory.  Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true);  Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain names.

Respondent deliberately registered the disputed domain names to capitalize on Complainant’s established mark.  Moreover, Respondent used Complainant’s mark to divert Internet consumers to <omegafind.com>, Respondent’s commercial website. There are no rights or legitimate interests when one tries to benefit from the unauthorized use of another’s mark by diverting Internet traffic to other websites pursuant to Policy ¶ 4(c)(i) and 4(c)(iii). Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <bloombberg.com>, <bloomborg.com> or <bloomberge.com> domain names. Complainant has established itself as the sole and bona fide possessor of all legitimate rights and interests in the mark BLOOMBERG. Since Respondent has not come forward with a viable alternative rationalization for its use of the registered mark of Complainant, and uses many confusingly similar domain names to direct users to another site, it can be deduced that Respondent has no rights to the domain name under Policy ¶ 4(c)(ii). Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

Respondent has registered and is using the disputed domain names in bad faith. Complainant’s mark, BLOOMBERG, is registered with the USTPO. Respondent was placed on constructive notice by virtue of registration of Complainant’s mark on the Principle Register. Respondent’s registration of the disputed domain names thereafter, containing Complainant’s mark, is an indication of bad faith registration. Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith). Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

As stated previously, Complainant is a well-known international financial business enterprise and its name and service marks are well known through extensive marketing and advertising. Respondent has engaged in a practice of registering domain names similar to that of Complainant’s mark and altering the name slightly. This is commonly referred to as “typosquatting”. Typosquatting is a recognized bad faith use of a domain name under the UDRP. See L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names). Respondent has capitalized on Complainant’s marks as well as reputation by registering and using domain names so similar to the registered marks through typosquatting.

Additionally, according to Policy ¶ 4(b)(iv), evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well known reputation by attracting Internet users to a website, for commercial gain. Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.

Accordingly, it is ordered that the domain names <bloombberg.com>, <bloomborg.com> and <bloomberge.com> be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  December 13, 2002

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