DECISION

Bloomberg L.P. v. Jane Alley d/b/a BB Finance

Claim Number:  FA0307000171260

PARTIES

Complainant is Bloomberg L.P., New York, NY, (“Complainant”) represented by Alexander Kim.  Respondent is Jane Alley d/b/a/ BB Finance, London, Great Britain (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bloombergbank.com>, registered with Schlund+Partner Ag.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 24, 2003; the Forum received a hard copy of the Complaint on July 31, 2003.

On August 6, 2003, Schlund+Partner Ag confirmed by e-mail to the Forum that the domain name <bloombergbank.com> is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 August 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 26, 2003 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@bloombergbank.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 September 9, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 makes the following assertions:

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

2. Respondent does not have any rights or legitimate interests in the <bloombergbank.com> domain name.

3. Respondent registered and used the <bloombergbank.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Bloomberg L.P., is the holder of at least thirty-one (31) trademarks and service marks containing the BLOOMBERG mark.  Complainant has also obtained registrations for the BLOOMBERG family of marks in over ninety (90) countries.  Specifically, Complainant is the holder of the United States Patent Trademark Office (“USPTO”) Registration No. 2,045,957 (registered on the Principal Register on March 18, 1997) for the BLOOMBERG mark.  Complainant also holds Registration No. 2,070,017 (registered on July 2, 1997) for the BLOOMBERG mark with the United Kingdom Patent Office.

Complainant has continuously used its BLOOMBERG mark in commerce since 1993.  Complainant uses the BLOOMBERG mark in numerous domain names including <BLOOMBERG.com> and <BLOOMBERG.org>.  Complainant has not licensed or otherwise permitted Respondent to use its mark for any reason.

Since its inception in 1983, Complainant has become one of the largest providers of worldwide financial news and information and related goods and services.  Complainant has been recognized as a leading information and analysis source with over 100 offices worldwide.

Respondent registered the <bloombergbank.com> domain name on May 28, 2003. 

Respondent is purportedly offering banking services on the website associated with the <bloombergbank.com> domain name.  Respondent is soliciting bank account details from Internet users at the website hosted by the disputed domain name.  Respondent is also using Complainant’s London office as the street address on documents at its website.  

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 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 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 registrations on the Principal Register with the USPTO and the United Kingdom Patent Office.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v.  Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <bloombergbank.com> domain name registered by Respondent is confusingly similar to Complainant’s BLOOMBERG mark.  The disputed domain name incorporates Complainant’s entire mark and merely adds the generic work “bank” and the top-level domain “.com”.  The Panel finds that the BLOOMBERG mark is the prominent feature in the <bloombergbank.com> domain name.  Accordingly, the Panel concludes that Respondent’s domain name is not sufficiently distinguishable from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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” and thus Policy ¶ 4(a)(i) is satisfied).

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

Rights or Legitimate Interests

Based on Respondent’s failure to Respond to the Complaint, the Panel presumes that Respondent does not have any rights or legitimate interests in the <bloombergbank.com> domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

Respondent has not submitted any evidence that it is commonly known by the <bloombergbank.com> domain name or the BLOOMBERG mark.  In addition, Complainant has not licensed or otherwise permitted Respondent to use its mark for any purpose.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent is using the <bloombergbank.com> domain name to lure Internet users to its website by appearing to offer banking services on behalf of Complainant, although Respondent is completely unrelated to Complainant.  Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum March 13, 2002) (where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Prudential Ins. Co. of Am.  v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

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

Registration and Use in Bad Faith

Respondent is using Complainant’s BLOOMBERG mark to intentionally attract, for commercial gain, Internet users to the <bloombergbank.com> domain name by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.  Respondent is soliciting account details from unwary Internet users by causing them to believe that any goods or services displayed at Respondent’s website are somehow connected with or endorsed by Complainant.  Thus, the Panel finds that Respondent registered and used the <bloombergbank.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Furthermore, Respondent registered the <bloombergbank.com> domain name in bad faith because it had constructive knowledge of Complainant’s BLOOMBERG mark prior to registering the domain name at issue.  By virtue of Complainant’s registration of its mark, Respondent was constructively on notice of Complainant’s rights in the BLOOMBERG mark in May 2003, when Respondent registered the domain name containing the BLOOMBERG mark.  Thus, the Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) when it registered the disputed domain name.  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 Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).     

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <bloombergbank.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  September 12, 2003

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