DECISION

Bloomberg L.P. v. FBS UK Ltd

Claim Number: FA0105000097187

PARTIES

The Complainant is Bloomberg L.P., New York, NY, USA (“Complainant”) represented by Alexander Kim.  The Respondent is FBS UK Ltd, London, UK (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <e-bloomberg.com>, registered with Melbourne IT.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 10, 2001; the Forum received a hard copy of the Complaint on May 15, 2001.

On May 14, 2001, Melbourne IT confirmed by e-mail to the Forum that the domain name <e-bloomberg.com> is registered with Melbourne IT and that the Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 15, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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@e-bloomberg.com by e-mail.A timely response was received and determined to be complete on May 31, 2001.

On June 5, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.)  as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent’s registration of the Bloomberg name is confusingly similar to Complainant’s mark, that the Respondent has no right or legitimate interest in the domain name at issue, and that the Respondent registered and used the domain name at issue in bad faith.

B. Respondent

The Respondent contends that the domain name at issue is not identical or confusingly similar to the Complainant’s trademark rights, that the Respondent has legitimate rights to the domain name, that there was no registration or use in bad faith.

FINDINGS

The Complainant, Bloomberg, L.P., is a Delaware limited partnership with a variety of news and financial information and related goods and services, has been in business since 1983, and is recognized worldwide.  The Complainant has created significant goodwill and widespread consumer recognition though substantial advertising and promotion of its mark, trade name, domain names. 

In 1997, the Complainant registered the trademark and service mark BLOOMBERG with the United States Patent and Trademark Office.  The Complainant currently holds a family of at least 23 trademarks and service marks in the United States and has obtained registrations for marks in over 75 countries.

Through advertising and promotion of Complainant’s mark, the trade name and various domain names have created goodwill and widespread consumer recognition.

The Respondent dos not dispute the existence of the various trademark registrations by the Complainant; however the Respondent makes reference to the fact that the services offered at its website are not the same as the goods and services described in Complainant’s trademark registrations.

The Respondent states that its business plan was to provide assistance to inventors and creators to help them bring their ideas into the marketplace.  The Respondent states that Mr. Melvyn Bloomberg and his two friends, Edna and David Staub, set up the business in 1998.    Melvyn Bloomberg was slated to be one of the directors; however, due to failing health, was appointed and resigned his position on the same day.

DISCUSSION

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.

Identical and/or Confusingly Similar

It appears that the Respondent registered the domain name by using the name "bloomberg" and adding an "e-" as a prefix.  Although the Respondent claims that the domain name was registered in the name of Melvyn Bloomberg, it does not alter the fact that the domain name is confusingly similar to the Complainant’s famous mark.  See Crédit Lyonnais v. Association Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names “ecanadiantire.com” and “e-canadiantire.com” are confusingly similar to Canadian Tire’s trademarks).

Further, the domain name at issue is so confusingly similar that it would not be unreasonable to assume that an Internet user may think that the domain names are somehow affiliated with Complainant’s mark.  The Respondent’s argument that they do business in and are well known in the UK does not alter the fact that the Complainant has been in business for almost 20 years prior to the registration of the domain name, and registered its mark in the UK in 1994.   See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Rights or Legitimate Interests

The Respondent claims that the name was registered by Mr. Melvyn Bloomberg, who was one of the company’s "directors", being appointed and resigning on the same day due to failing health.  It is Mr. Bloomberg’s contention that he still acts as a consultant for the Respondent Company.  He claims to have registered the domain name last year because he planned to use it as an e-mail address which clients could use to contact him for advice.  He states that it was also a gesture to his friends who continue to care for him that he was still committed to their company.  It is also noted in the Response that due to Mr. Bloomberg’s failing health he has not yet been able to put the domain name to its intended use and has left the domain name re-directed to the Respondent Company website. 

The Respondent has not presented any evidence that the Complainant licensed or otherwise permitted the Respondent to use any of their marks, nor permitted Respondent to apply for use of any domain names incorporating those marks. 

Even though the domain name at issue reflects the last name of one of the "directors" of the Respondent Company, for which the domain name at issue was registered, Respondent fails to present any evidence that it has been commonly known by "Bloomberg" and does not present any evidence of acquiring service mark or trademarks rights using said name.  See Systima Ltd. v. Byrne, D2001-0300 (WIPO Apr. 23, 2001) (finding “[t]here is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy”); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent does not have rights in domain name when Respondent is not known by mark).

Also, the Respondent is not using the domain name at issue in connection with a bona fide offering of goods or services.   See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg Co. v. R & S Technologies, 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).

Finally, when the URL is entered, it merely re-directs users  to Respondent’s FSBUK.COM website.  Therefore, the Respondent has failed to make any non-commercial or fair use of the domain name at issue.  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Registration and Use in Bad Faith

The Respondent has not provided any evidence that it is in fact engaged in any type of business.

Given the lack of evidence presented, coupled with the fact that the domain name at issue re-directs Internet users to Respondent’s website, it would appear that the Respondent was using the domain name at issue to attract, for commercial gain, Internet users to its website .  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s goodwill and attract Internet users to the Respondent’s website); 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 website without permission from Complainant).

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.   Accordingly, for all of the foregoing reasons, it is ordered that the domain name "E-BLOOMBERG.COM" be transferred from the Respondent to the Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  June 19, 2001

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2001/1190.html