DECISION

Bloomberg L.P. v. GAF c/o Thomas Pearson a/k/a Tom Pearson

Claim Number:  FA0308000190614

PARTIES

Complainant is Bloomberg L.P., New York, NY (“Complainant”) represented by Alexander Kim.  Respondent is GAF c/o Thomas Pearson a/k/a Tom Pearson, El Cajon, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bloomberg-co.com>, <bloomberg-inc.com>, <bloomberg-intl.com>, <bloomberg-news.net>, <bloomberg-online.com>, <bloomberg-usa.com>, <bloomberg-web.com>, <bloomberg-web-inc.com>, <bloomberg-web-intl.com>, <bloomberg-web-online.com>, <bloomberg-web-usa.com>, <bloombergweb.com>, and <bloomberg-news.biz>, registered with Abacus America, Inc. d/b/a Names4Ever.Com (“Names4Ever.Com”).

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 26, 2003; the Forum received a hard copy of the Complaint on September 4, 2003.

On September 4, 2003, Names4Ever.Com confirmed by e-mail to the Forum that the domain names <bloomberg-co.com>, <bloomberg-inc.com>, <bloomberg-intl.com>, <bloomberg-news.net>, <bloomberg-online.com>, <bloomberg-usa.com>, <bloomberg-web.com>, <bloomberg-web-inc.com>, <bloomberg-web-intl.com>, <bloomberg-web-online.com>, <bloomberg-web-usa.com>, <bloombergweb.com>, and <bloomberg-news.biz> are registered with Names4Ever.Com and that Respondent is the current registrant of the names.  Names4Ever.Com has verified that Respondent is bound by the Names4Ever.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 September 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 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@bloomberg-co.com, postmaster@bloomberg-inc.com, postmaster@bloomberg-intl.com, postmaster@bloomberg-news.net, postmaster@bloomberg-online.com, postmaster@bloomberg-usa.com, postmaster@bloomberg-web.com, postmaster@bloomberg-web-inc.com, postmaster@bloomberg-web-intl.com, postmaster@bloomberg-web-online.com, postmaster@bloomberg-web-usa.com, postmaster@bloombergweb.com, and postmaster@bloomberg-news.biz 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 October 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant

Respondent’s <bloomberg-co.com>, <bloomberg-inc.com>, <bloomberg-intl.com>, <bloomberg-news.net>, <bloomberg-online.com>, <bloomberg-usa.com>, <bloomberg-web.com>, <bloomberg-web-inc.com>, <bloomberg-web-intl.com>, <bloomberg-web-online.com>, <bloomberg-web-usa.com>, <bloombergweb.com>, and <bloomberg-news.biz> domain names are confusingly similar to Complainant’s BLOOMBERG and BLOOMBERG NEWS marks.

Respondent does not have any rights or legitimate interests in respect of the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B.  Respondent

            Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant company Bloomberg L.P. was founded in 1983 by Michael R. Bloomberg, now mayor of New York City.  Complainant is one of the largest providers of worldwide financial news and information as well as related goods and services.  Recognized worldwide as a leading financial information and analysis source, Complainant employs nearly 8,000 employees in over 100 offices.  Complainant owns registered U.S. trademarks in BLOOMBERG and BLOOMBERG NEWS, registered in 1997 and 1999, respectively, as well as trademarks registered in other countries.

Respondent registered <bloomberg-news.net> on February 2, 2003, <bloomberg-news.biz> on February 3, 2003, and the remaining domain names on February 13, 2003.  There is no evidence that Respondent has made any use of any of the names.

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 proven its rights in BLOOMBERG and BLOOMBERG NEWS.  Each of the disputed domain names is confusingly similar to those marks.

The <bloomberg-news.net> and <bloomberg-news.biz> domain names would be identical to the BLOOMBERG NEWS mark, but for the hyphen between the two words.  The use of a hyphen in domain names will not render them dissimilar to an otherwise identical mark.  See Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

Similarly, <bloomberg-co.com>, <bloomberg-inc.com>, <bloomberg-intl.com>, <bloomberg-online.com>, <bloomberg-web.com>, <bloombergweb.com>, and <bloomberg-usa.com> are each confusingly similar to Complainant’s BLOOMBERG mark as each fully incorporates the BLOOMBERG mark and adds a generic term that Internet users might enter if searching for Complainant’s website.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

Finally, the <bloomberg-web-online.com>, <bloomberg-web-inc.com>, <bloomberg-web-intl.com>, and <bloomberg-web-usa.com> domain names are also sufficiently similar to Complainant’s BLOOMBERG mark, as each appends two generic terms to the mark, which might cause search engines to mistakenly refer users seeking Complainant’s site to a site hosted by Respondent, or which might cause confusion as to site sponsorship for viewers of the resultant web pages.  See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

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

Rights or Legitimate Interests

Respondent has not demonstrated any use of the disputed domain names and has not come forward to explain what legitimate use it might have for the names.  Thus, the Panel may presume that Respondent lacks rights and legitimate interests in the domain names at issue.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also 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); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use").

There is no evidence in the record to suggest that Respondent is commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii), and given the direct relationship between the names and the business of Complainant, such a claim would seem highly implausible.  See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

By passively holding the domain names without use, Respondent has not demonstrated a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names, and thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered thirteen domain names subject to the Policy that included, in full, Complainant’s BLOOMBERG mark.  While Respondent has not made active use of the names, it appears from Respondent’s pattern of behavior that Respondent planned to sell the names to Complainant, or planned to develop a website that would misleadingly appear to be sponsored by or affiliated with Complainant.  For whatever reason, Respondent’s behavior has the effect of denying Complainant the ability to register domain names reflecting its marks.  Given the similarity between the domain names and Complainant’s business, it appears that Respondent acted specifically for this purpose.  Such calculated behavior demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).

Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bloomberg-co.com>, <bloomberg-inc.com>, <bloomberg-intl.com>, <bloomberg-news.net>, <bloomberg-online.com>, <bloomberg-usa.com>, <bloomberg-web.com>, <bloomberg-web-inc.com>, <bloomberg-web-intl.com>, <bloomberg-web-online.com>, <bloomberg-web-usa.com>, <bloombergweb.com>, and <bloomberg-news.biz> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 20, 2003

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