DECISION

Bloomberg L.P. v. Future Movie Name

Claim Number:  FA0212000139664

PARTIES

Complainant is Bloomberg L.P., New York, NY (“Complainant”) represented by Alexander Kim, of Bloomberg L.P. Respondent is Future Movie Name, Miami, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bloonberg.com>, registered with Intercosmos Media Croup, Inc. d/b/a directNIC.com.

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 Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 27, 2002; the Forum received a hard copy of the Complaint on December 31, 2002.

On January 6, 2003, Intercosmos Media Croup, Inc. d/b/a directNIC.com confirmed by e-mail to the Forum that the domain name <bloonberg.com> is registered with Intercosmos Media Croup, Inc. d/b/a directNIC.com and that Respondent is the current registrant of the name. Intercosmos Media Croup, Inc. d/b/a directNIC.com has verified that Respondent is bound by the Intercosmos Media Croup, Inc. d/b/a directNIC.com 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 January 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 2003 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@bloonberg.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 February 5, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bloonberg.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark.

2. Respondent does not have any rights or legitimate interests in the <bloonberg.com> domain name.

3. Respondent registered and used the <bloonberg.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Bloomberg L.P., holds numerous registrations with the U.S. Patent and Trademark Office (“USPTO”) for the BLOOMBERG mark denoting Complainant’s financial services relating to securities trading and related information. More specifically, Complainant registered BLOOMBERG on the Principal Register of the USPTO on March 18, 1997. Complainant’s registration indicates first use of the mark in commerce as being December 1985. In addition to the aforementioned mark, Complainant has registered a family of at least twenty-three (23) trademarks and service marks containing the BLOOMBERG mark. Complainant’s BLOOMBERG family of marks is registered in over seventy-five (75) countries.

Complainant operates on the Internet primarily from its <bloomberg.com>, <bloomberg.net> and <bloomberg.org> domain names, which were registered on September 29, 1993, March 8, 1997, and December 14, 1999, respectively. Complainant holds over 400 other domain names that incorporate the BLOOMBERG mark or confusingly similar variations thereof.

Complainant’s substantial advertising and promotion of the BLOOMBERG mark have created significant goodwill and widespread consumer recognition. Since its inception in 1983, Complainant has become one of the largest providers of worldwide financial news and information and related goods and services. Complainant employs nearly 8,000 employees in over 100 offices worldwide.

Respondent, Future Movie Name, registered the <bloonberg.com> domain name on April 25, 2001. Complainant’s investigation of Respondent reveals that Respondent has established a pattern of registering variations of famous marks in domain names. More specifically, Complainant notes that Respondent has registered the following domain names, inter alia: <airfoce.com>, <bridgeston.com>, <circuitcty.com>, <citiban.com>, <foxsprts.com>, <dorito.com>, <homedpto.com>, <jcpeneys.com> and <meritrade.com>. Complainant asserts that it has already retrieved two domain names (<bloombergs.com> and <bloomerg.com>) from Respondent in June 2001.

Additionally, Complainant’s investigation indicates that Respondent’s domain names have previously resolved to a commercial website located at <directory.enginie54.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 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 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 USPTO and relevant worldwide trademark authorities, and continuous use of the mark to denote financial services since 1983.

Respondent’s <bloonberg.com> domain name is confusingly similar to Complainant’s BLOOMBERG mark. Respondent’s domain name incorporates a common typographical error into Complainant’s domain name. Typographical variations of famous marks fail to create distinguishing characteristics under a Policy ¶ 4(a)(i) analysis. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); see also 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).

Additionally, because a top-level domain (such as “.com”) is a required feature in a domain name, its presence is inconsequential when determining identicality or confusing similarity under the Policy. See Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

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

Rights or Legitimate Interests

As stated, Respondent failed to submit a Response in this proceeding. Complainant’s assertions are uncontested; therefore, it is proper for the Panel to accept Complainant’s reasonable contentions as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a Response, it is appropriate to accept as true all allegations of the Complaint”); see also 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).

Because Complainant submitted a prima facie case, the burden of demonstrating rights and legitimate interests effectively shifts to Respondent. Respondent failed to submit any evidence or information supporting a finding in its favor to the Panel, thereby failing to invoke any circumstance that could demonstrate rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Complainant’s uncontested assertions and supporting evidence indicate that Respondent has established a pattern of registering infringing domain names with the intention of diverting ensnared Internet users to a commercial website. Respondent is engaging in a practice commonly referred to as “typosquatting,” whereby a registrant seeks to capitalize on a famous mark by registering a confusingly similar variation of the mark in a domain name. Because of Complainant’s record of Respondent’s extensive infringing activities, Respondent must establish a reasonable use for the <bloonberg.com> domain name. A pattern of conduct that has been established over time is likely to continue, and it is presumed that Respondent lacks rights in <bloonberg.com> as it has failed to establish a legitimate use for the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise); see also Stop & Shop Supermarket Co. v. Anderson, FA 133637 (Nat. Arb. Forum Jan. 8, 2003) (“Through its lack of response to the Complaint, Respondent not only fails to meet its burden, but concurrently makes an affirmative gesture that it has no rights or legitimate interests in the disputed domain names”).

No evidence before the Panel suggests that Respondent has ever been commonly known by the <bloonberg.com> domain name, or that Respondent has acquired trademark or service mark rights in such name. Complainant’s examination of Respondent reveals that Respondent’s name is “Mike Torres.” Because Respondent has continually engaged in registering typographical errors of famous marks and Complainant’s mark is internationally known, it is presumed that Respondent cannot establish rights or legitimate interests under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

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

Registration and Use in Bad Faith

Evidence of bad faith registration and use is explicitly articulated in paragraph 4(b) of the Policy. However, paragraph 4(b) is not an exhaustive list, and other circumstances may give rise to a finding of bad faith. The Panel is permitted to consider the “totality of circumstances” surrounding the registration and use of the domain name in determining if bad faith exists. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant’s BLOOMBERG mark is registered on the Principal Register of the USPTO, the relevant trademark authority since Respondent’s recorded location is in the United States. Registration of a mark on the Principal Register constitutes constructive notice of the registrant’s rights in the mark. By virtue of Complainant’s prior registration of the BLOOMBERG mark on the Principal Register, Respondent was made aware of Complainant’s rights in the mark. Respondent’s subsequent registration of an infringing domain name, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also 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).

Respondent’s bad faith use of the domain name is evidenced by its pattern of infringing behavior. The practice of “typosquatting” has been recognized as a 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); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 26, 2002) (determining Respondent’s typosquatting behavior in registering and using the <wellfargo.com> domain name fulfills the bad faith requirements of Policy ¶ 4(a)(iii)). 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <bloonberg.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  February 8, 2003

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