DECISION

Bloomberg L.P. v. Global Media Communications a/k/a Dallas Internet Services

Claim Number: FA0105000097136

PARTIES

Complainant is Bloomberg L.P., New York, NY, USA (“Complainant”) represented by Alexander Kim.  Respondent is Global Media Communications a/k/a Dallas Internet Services, New York, NY, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bloombergs.com> and <bloomerg.com> registered with Tucows, 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 Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2001; the Forum received a hard copy of the Complaint on May 4, 2001.

On May 3, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <bloombergs.com> and <bloomerg.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 24, 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@bloombergs.com and postmaster@bloomerg.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 May 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <bloombergs.com> and <bloomerg.com> are confusingly similar to Complainant’s federally registered trademark.

Respondent has no rights or legitimate interests in the <bloombergs.com> and <bloomerg.com> domain names.

Respondent registered and used the <bloombergs.com> and <bloomerg.com> domain names in bad faith.

B. Respondent

No response was received from Respondent.

FINDINGS

Since 1983, Complainant has become one of the largest providers, worldwide, of financial news and information and related services.  Complainant registered the trademark 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.

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.  <Bloomberg.com> has been in continuous use by Complainant since its registration in 1993.  In addition, Complainant has registered over 400 other domain names incorporating the word “bloomberg.”

Respondent registered the <bloombergs.com> and <bloomerg.com> domain names on June 7, 2000.

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 <bloomerg.com> domain name is a misspelling of Complainant’s BLOOMBERG mark.  The deletion of the letter “b” in Respondent’s domain name does not take the domain name out the realm of Policy ¶ 4(a)(i) and confusing similarity.  See 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 the Complainant’s mark “State Farm”); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).

The <bloombergs.com> domain name is also confusingly similar to Complainant’s BLOOMBERG mark, as it merely adds the letter “s” to the end of Complainant’s distinctive mark.  See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an "s" to the end of the Complainant’s mark, “Cream Pie” does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Reuters Limited v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).

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

           

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <bloombergs.com> and <bloomerg.com> domain names.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).  Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).

Respondents registration and use of the <bloombergs.com> and <bloomerg.com> domain names fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to the Policy ¶ 4(c)(i).  Respondent’s use of the disputed domain names is not a bona fide offering of goods nor a legitimate noncommercial or fair use, because Respodent is using Complainant’s BLOOMBERG mark to lure Internet traffic to his web site.  See 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 web site by using Complainant’s trademarks).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the disputed domain names, pursuant to the 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <bloombergs.com> and <bloomerg.com> domain names and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s use of the <bloombergs.com> and <bloomerg.com> domain names to lure Internet users to the disputed websites, allegedly for commercial gain, is evidence of bad faith under Policy ¶ 4(b)(iv).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith where Respondent linked the domain name to a website that offers a number of web services); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant).

Furthermore, because of the famous and distinctive nature of Complainant’s marks, it may be assumed that Respondent had notice of Complainant’s marks at the time Respondent registered the infringing <bloombergs.com> and <bloomerg.com> domain names.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Bad faith is further evidenced by the fact that Respondent provided false registration and contact information for the <bloomerg.com> and <bloombergs.com> domain names.  See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).

Because BLOOMBERG has no meaning other than to identify Complainant’s company and its namesake, Respondent registered and used the confusingly similar <bloombergs.com> and <bloomerg.com> domain names in bad faith.  See Dr. Karl Albrecht v. Eric Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

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

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <bloombergs.com> and <bloomerg.com> domain names be transferred from Respondent to Complainant.

John J. Upchurch

Dated: June 8, 2001

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