DECISION

Bloomberg LP v. A.J.E. Metz a/k/a VuurWerk Internet c/o Arno Kensen

Claim Number: FA0212000135606

PARTIES

Complainant is Bloomberg LP, New York, NY, USA (“Complainant”) represented by Alexander Kim, of Bloomberg LP.  Respondent is A.J.E. Metz a/k/a Vuurwerk Internet c/o Arno Kensen, Amsterdam, THE NETHERLANDS (“Respondent”)

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bloombergonline.com>, registered with Register.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 December 2, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On December 3, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <bloombergonline.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 December 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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@bloombergonline.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 6, 2003, 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

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

2. Complainant argues that Respondent does not have rights to or legitimate interests in the <bloombergonline.com> domain name.

3. Complainant argues that Respondent registered and used the <bloombergonline.com> domain name 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 is registered on the Principle Register of the United States Patent and Trademark Office (“USTPO”). Moreover, Complainant is also registered with the Benelux (multi-country coalition between Belgium, The Netherlands and Luxemburg) authorities, where Respondent is listed as conducting business (Reg. No. 612,552). 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, or variations thereof.

Respondent registered <bloombergonline.com> on May 11, 2000. Since registration, Respondent has made no use of the domain name.

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, the Benelux authorities, and subsequent continuous use of the mark.

Respondent’s <bloombergonline.com> domain name is confusingly similar to Complainant’s registered BLOOMBERG mark. The addition of the generic term “online” does not create a distinct mark dissimilar from Complainant’s BLOOMBERG mark. By incorporating the entire mark of Complainant, a distinct domain name capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis has not been formed. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); See The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that Respondent’s domain name <prudentialonline.com> is confusingly similar to Complainant’s PRUDENTIAL mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of  Complainant combined with a generic word or term).

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

Rights or Legitimate Interests

When a Response is not provided, then the Panel may accept all reasonable allegations made in the Complaint to be factually correct. Unless the assertions presented are clearly in conflict with the evidence on record, there is a presumption of validity in favor of Complainant.  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 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).

Respondent has made no use of the disputed domain name. Simply registering the domain name is not sufficient to establish rights and legitimate interests. When Respondent makes no use of a disputed domain name, it can neither be said as being used for a bona fide use under Policy ¶ 4(c)(i) or as a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <bloombergonline.com> domain name. Complainant has established itself as the sole holder of all rights and legitimate interests in the BLOOMBERG mark. Since Respondent has not come forward with a viable alternative supporting its use of Complainant’s mark, and does not have authorization or consent to use the mark, the Panel may accept the proposition proposed by Complainant that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See 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); see also 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 registered and is using the disputed domain name in bad faith. Complainant’s BLOOMBERG mark is registered with both the USTPO and the Benelux authorities, thereby placing Respondent on constructive notice. Moreover, given the worldwide identification of the BLOOMBERG mark, it can also be inferred that Respondent was conscious of the mark, and consequently had notice of Complainant’s rights. Respondent’s subsequent registration of the disputed domain name containing Complainant’s mark notwithstanding knowledge of Complainant’s rights, is evidence of bad faith registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill").

Respondent engaged in passively holding the disputed domain name. Respondent, by failing to utilize the <bloombergonline.com> domain name raises the implication that Respondent is engaging in bad faith registration and use. Respondent has failed to proffer any evidence that it plans on using the disputed domain name in any fashion. By holding a domain name for over two years and failing to use it, for any legitimate purpose, the Panel shall infer bad faith.  See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

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 name <bloombergonline.com> be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 9, 2003

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