Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bloomberg L.P., New York, NY, USA ("Complainant"). The Respondent is Peter A. Schorsch, Jenkintown, PA, USA ("Respondent").

The domain name at issue is "thebloombergmarket.com", registered with Registrars.com.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 29, 2001; the Forum received a hard copy of the Complaint on February 2, 2001.

On February 01, 2001, Registrars.com confirmed by e-mail to the Forum that the domain name "thebloombergmarket.com" is registered with Registrars.com and that the Respondent is the current registrant of the name. Registrars.com has verified that Respondent is bound by the Registrars.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 February 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@thebloombergmarket.com by e-mail.

A timely response was received and determined to be complete on February 26, 2001.

On March 5, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. The domain name in issue, "thebloombergmarket.com" is confusingly similar to Complainant’s famous and distinctive mark, "BLOOMBERG," which was registered with the United States Patent and Trademark Office on March 18, 1997, for computers and computer programs, etc. (International Class 9); publications, etc. (International Class 16); financial services, etc. (International Class 36); radio and television broadcasting, etc. (International Class 38); entertainment services, etc. (International Class 44); and news reporting services (International Class 42).

2. Twenty-three additional marks containing the name BLOOMBERG also have been registered with the United States Patent and Trademark Office, and there have been registrations of the name BLOOMBERG in seventy-five foreign countries.

3. Bloomberg is a worldwide leading financial source with over 4,500 employees serving clients in over 100 countries.

4. The domain name in issue simply adds generic terms to Complainant’s mark.

5. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s mark.

6. Bloomberg LP is named after is founder, Michael R. Bloomberg, who organized the company in 1983. Clearly, Respondent was fully aware of the mark, apart from constructive notice, before registering the domain name in issue.

7. The registration and use of the domain name are in bad faith because there is a likelihood of confusion with Complainant’s marks, as to the source, sponsorship, affiliation and/or endorsement. Such registration and use, moreover, would constitute a false description or registration as to a relationship between Complainant and Respondent.

B. Respondent

1. Respondent is creating an on-line business called "Industry Vision" designed to provide community information with a series of overlapping transactual engines.

2. Respondent is or will provide direct web accessible links to the industries and the markets, and has acquired appropriate domain names to allow its members direct access to the active markets, e.g., inter alia, the bondmarkets.com, the securitiesmarkets.net, and thebloombergmarket.com.

3. The domain name in issue is not confusingly similar to Complainant’s mark, for there is no, nor will there be, attempt to garner the goodwill or any value from the mark.

4. Respondent has a legitimate interest in acquiring domain names that would give its customers easy access to information that is in the public domain or which would be purchased/licensed by the customers or Respondent.

5. Respondent has spent substantial time and money in preparing to use the domain name in issue and other domain names for its "Industry Vision" project. The domain name was not registered to disrupt the business of a competitor, nor will Respondent redirect any traffic by using the mark.

6. The mark actually has not been used.

1. Complainant’s mark was registered with the United States Patent and Trademark Office on March 18, 1997. The mark is a surname that has acquired a famous and distinctive secondary meaning. (See Avery Dennison Corporation v. Sumpton (9^th Cir. 1999) [1999] USCA9 436; 189 F.3d 868, 877, and the authorities therein cited.)

2. The domain name in issue was registered on February 17, 2000.

3. Complainant has used its mark since 1983, and it has become world famous in the businesses of computer services, publications, financial services, radio and television broadcasting, entertainment services, and news reporting services.

4. Respondent has a business plan which is called "Industry Vision," which requires it to provide its customers easy access on the World Wide Web to information that is in the public domain or would be licensed/purchased.

5. Respondent has not as yet actually "used" the domain name in issue.

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.

There is no question but that the domain name in issue is confusingly similar to Complainant’s mark. The addition of generic terms to the mark in this context does not change this conclusion. (See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding that "[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY.")

The business plan of Respondent, "Industry Vision," is accepted as bona fide. It therein is proposed to provide Respondent’s customers easy access to information on the public domain or that which would be purchased/licensed by the customers or Respondent. It is to be noted that many or most of the domain names registered by Respondent contain generic terms, such as "copper," and "aluminum," or geographic and descriptive terms, such as "far east" and "Canadian dollar."

No information is to be found in the record, however, which would allow Respondent to utilize the famous and distinctive mark, "Bloomberg" based on the surname of Complainant’s founder without purchase, license or even consultation with the owners of the mark.

Indeed, Respondent effectively has conceded that this is so when, at page 5 of its Response, he alludes to the providing of "information that is in the public domain or would either be purchased/licensed by the member companies or the Respondent." (Emphasis supplied.)

If the contrary were the law, we would have to agree with Mr. Bumble that "If the law supposes that . . . the law is an ass, an idiot."

Respondent has no rights or legitimate interest in the domain name in issue which would be used in the manner and for the purpose proposed.

Sectin 4(b) of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4(b) provides:

The words "source, sponsorship, affiliation, or endorsement" are particularly apt here. Inevitably, the Panelist believes that consumers would conclude that the domain name in issue was endorsed and sponsored by Complainant.

In addition to the demonstration of bad faith by the application of subparagraph (iv) of Section 4(b) of the Policy, there is a legal presumption of bad faith, when Respondent clearly was aware of Complainant’s famous and distinctive trademark.

In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9^th 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said:

Thus, the domain name in issue was registered in bad faith. Respondent, however, argues that he actually has not used the domain name in issue in bad faith and, accordingly, the name could not have been used in "bad faith."

The Panelist heretofore has determined that Respondent has no rights or legitimate interest in the domain name, and that it has registered the name in bad faith. It makes no sense whatsoever to wait until he actually "uses" the name, when inevitably, when there is such use, it will create the confusion described in the Policy.

Under similar circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened. (Green Products Co. v. Independence By-Products Co. (N.D. Iowa 1997) 992 F.Supp. 1070.) The threatened harm is "use." (See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum, December 29, 2000.)

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name "thebloombergmarket.com" registered by Respondent Peter A. Schorsch shall be, and the same is, transferred to Complainant Bloomberg LP.