Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Bloomberg L.P., New York, NY, USA ("Complainant"). The Respondent is Martin Aronsky, Kusnacht, , Switzerland ("Respondent").

The domain names at issue are "bloombergradio.tv" and "thebloomberg.tv"

registered with Dot TV.

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.

Tyrus R. Atkinson, Jr., as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 17, 2001; the Forum received a hard copy of the Complaint on February 12, 2001.

On February 27, 2001 Dot TV confirmed by e-mail to the Forum that the domain names "bloombergradio.tv" and "thebloomberg.tv" are registered with Dot TV and that the Respondent is the current registrant of the name. Dot TV has verified that Respondent is bound by the Dot TV 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 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@bloombergradio.tv, postmaster@thebloomberg.tv by e-mail.

A timely response was received and determined to be complete on March 20, 2001.

On March 28, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

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

None.

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.

Complainant certainly has rights in the registered marks BLOOMBERG, BLOOMBERG TELEVISION, BLOOMBERG INFORMATION RADIO, and THEBOOMBERG. The domain name THEBLOOMBERG.TV is confusingly similar to the mark, THE BLOOMBERG. The addition of an ordinary descriptive word or letters such as "tv" to a famous mark does not make the domain name dissimilar. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000). The same is true of the domain name BLOOMBERGRADIO.TV. Simply adding generic nouns to properly registered mark cannot be relied upon to differentiate the mark if the other elements of the domain name comprise a mark in which Complainant has rights. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000). See also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept 8, 2000) and Cellular One Group v Brien, D2000-0028 (WIPO Mar. 10, 2000). See also Nokia Corporation v. Nokiagirls.com a.k.a IBCC, D2000-0102 (WIPO April 18, 2000), finding that adding "girls" to the famous mark "Nokia" in a domain name was not sufficient to make the domain name dissimilar to the mark. It is quite clear that an Internet user would likely think there was an affiliation of some sort between Complainant and Respondent or to that person or organization to whom Respondent sells the domain name, when there is, in fact, no affiliation. That confusion based upon the famous BLOOMBERG mark, is improper. See Treeforms, Inc. v. Cayne Indus Sales Corp., FA95856 (Nat. Arb. Forum Dec.18, 2000). Complainant prevails on this issue.

Complainant has shown that it has not licensed Respondent to use the Complainant’s marks in any manner. Complainant contends that Respondent has never been known as BLOOMBERG, BLOOMBERGRADIO.TV OR THEBLOOMBERG.TV. Respondent fails to rebut this contention and it is taken as proved by Complainant. Complainant states that Respondent is making no non-commercial use or fair use of the domain names. It is obvious that Respondent is trying to sell the domain names to anyone who will buy them so no non-commercial use theory can be considered. Complainant contends that Respondent has made no use and no demonstrable preparation to use the domain names. It is clear that the only use to which Respondent will put the domain names is to offer them for sale. The showing by Complainant shifts the burden to Respondent to show, if he can, that he has legitimate rights and interests in the domain names. This can be done in any of the ways set out in the Uniform Domain Name Dispute Resolution Policy at Section 4 (c).

The only argument advanced by Respondent on this issue, is that certain terms, which were once famous marks, have become generic by use and that Bloomberg is not to be considered a protected trademark. Respondent’s showing is insufficient. All that Respondent has shown is that he registered and offered a domain name for sale. This alone does not establish legitimate rights and interests in a domain name. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000).

Respondent is not commonly known by the domain names, nor has Respondent used the domain names in connection with a legitimate non-commercial or fair use without intent for commercial gain. See Strojirny v. Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000), Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA95162 (Nat. Arb. Forum Aug. 29, 2000). "Respondent could only defeat Complainant’s trademark rights by showing prior registration and/or use or a license or Complainant’s acquiescence in Respondent’s trademark use or similar. None of this is apparent." See The Chase Manhattan Corp. v. Whitely, D2000-0346 (WIPO June 12, 2000).

Respondent is found to have no rights or legitimate interests in the domain names THEBLOOMBERG.TV or BLOOMBERGRADIO.TV. Complainant prevails on this issue.

Complainant must establish that the domain names in question have been registered and are being used in bad faith. Uniform Domain Name Dispute Resolution Policy, Sec. 4(a)(iii). Evidence of registration and use in bad faith can be shown by the methods shown in Section (b) of the Policy. The first method is set out as follows:

It is an undisputed fact that Respondent registered the domain names to sell to the highest bidder. This Panel infers that Respondent intended to sell the domain names for more than his out-of-pocket costs otherwise Respondent’s activities in registering and auctioning domain names would be a futile exercise.

Complainant’s marks are registered in Respondent’s home country of Switzerland. Respondent was on constructive notice of Complainant’s marks. This Panel infers that Respondent was on actual notice of Complainant’s marks on account of Respondent offering for sale BLOOMBERGRADIO.TV on his website as a "financial service and communications" domain name. There is no reason to associate BLOOMBERG with financial services and communications unless one knows that BLOOMBERG has established a reputation for providing such services. Why would a prospective purchaser of a domain name containing the name BLOOMBERG believe that such name would be a good one for financial services and communications, unless the purchaser knew of Complainant’s reputation in the field? Any purchaser of the domain names here in issue who used the domain names in the manner suggested by Respondent, that is to say as a "financial services and communications" website, would become a competitor of Complainant. Respondent does not say that he was not aware of Complainant and its reputation in the financial services area. The Panel finds that he could not have been unaware of Complainant’s marks. See Reuters Ltd. v. Teletrust IPR Ltd, D2000-0471 (WIPO Sept. 8, 2000). This Panel finds that he did have knowledge of Complainant and its marks and chose to register the domain names for the purpose of selling them either to Complainant or to a competitor of Complainant.

Offering domain names for sale at an auction site is evidence of bad faith registration and use. See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) that was also an "Afternic.com" auction sale. See also Gateway, Inc. v. David Ayers, D2000-0106 (WIPO Apr. 27, 2000), Chase Manhattan Corp. v. Jehovah Technologies PTE Ltd., D2000-0388 (WIPO July 5, 2000). A general offer to sell a domain name combined with no legitimate use of the domain name constitutes evidence of registration and use in bad faith. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000). General offers to sell a domain name, even if no certain price is demanded is evidence of bad faith. See American Anti-Vivisection Soc’y v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000).

Complainant has shown that Respondent registered and used the domain names in bad faith. Complainant prevails on this issue.