Complainant is Bloomberg Finance of New York, New York, United States of America, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Huang Wei of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2015. On August 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 1, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 8, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant in one of the largest providers of global financial news, data and related goods and services. Complainant is recognized as a leading source of financial information and analysis. One of the many products and services offered by Complainant is the BLOOMBERG PROFESSIONAL SERVICE which provides access to news, analytics, communications, charts, liquidity and trading services, with over 300,000 subscribers worldwide.
Complainant is headquartered in New York (United States of America) and employs more than 15,000 people in over 150 offices around the world including offices in Beijing and Shanghai. Its weekly publication, Bloomberg Businessweek, has a global circulation of over 980,000 in 150 countries. Complainant's news platform, Bloomberg News, delivers 5,000 stories a day from more than 150 bureaus in 73 countries.
Complainant is the owner of several trademark registrations for BLOOMBERG and BLOMBERG NEWS across various jurisdictions including Respondent's jurisdiction.
At the time of filing the Complaint, the disputed domain name was not resolving to any active page.
The disputed domain name was registered on July 14, 2015. 5. Parties' Contentions A. Complainant
Complainant has trademark rights for BLOOMBERG and BLOOMBERG NEWS in several jurisdictions, including the United States, the European Union and China (Respondent's jurisdiction) as evidenced by the registration certificates attached to the Complaint.
Complainant states that the disputed domain name is identical and confusingly similar to the trademark BLOOMBERG.
Complainant also states that the addition of a "new" generic Top-Level Domain ("gTLD") like ".news" should have an impact in the assessment of confusing similarity in this case. Complainant states that when comparing the disputed domain name and Complainant's BLOOMBERG NEWS trademark, the gTLD suffix of the disputed domain name may properly be considered in assessing and determining confusing similarity between the disputed domain name and Complainant's marks. Complainant states that when considering both the first and second level of the disputed domain name together, the disputed domain name is identical, and confusingly similar in sight, sound, and meaning, to Complainant's BLOOMBERG NEWS and BLOOMBERG trademarks. Thus, according to Complainant, the entirety of the disputed domain name is identical to Complainant's BLOOMBERG NEWS trademark, which warrants a finding of confusing similarity.
With respect to rights and legitimate interests Complainant states that:
- Respondent is not sponsored by or affiliated with Complainant in any way.
- Complainant has not given Respondent permission to use Complainant's trademarks in any manner, including as a domain name.
- Respondent is not commonly known by the disputed domain name.
- Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content.
- Respondent has failed to make use of the disputed domain name's website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which is evidences a lack of rights or legitimate interests in the disputed domain name.
With respect to bad faith Complainant states the following:
- Complainant and its BLOOMBERG NEWS and BLOOMBERG trademarks are known internationally, with trademark registrations across numerous countries.
- Complainant has marketed and sold its goods and services using this trademark since 1987, which is well before Respondent's registration of the disputed domain name on July 14, 2015.
- By registering a domain name that contains Complainant's BLOOMBERG trademark in its entirety, Respondent has created a domain name that is confusingly similar to Complainant's trademarks. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant's brand and business.
- It is "not possible to conceive of a plausible situation in which Respondent would have been unaware of" Complainant's brands at the time the disputed domain name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
- BLOOMBERG NEWS and BLOOMBERG are so closely linked and associated with Complainant that Respondent's use of this mark, or any minor variation of it, strongly implies bad faith.
- The disputed domain name currently resolves to an inactive site and is not being used.
- The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to Policy paragraph 4(b)(iv), with no good faith use possible.
- Respondent holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses.
Complainant requests the transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant proves each and all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name ; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established that "a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP" (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888). Here, the disputed domain name wholly incorporates Complainant's registered trademark BLOOMBERG. The disputed domain name is also confusingly similar to the trademark BLOOMBERG NEWS.
The use of the gTLD ".news" in the disputed domain name with the trademark BLOOMBERG is also an issue here. Past UDRP panels held that that elements such as ".com" or ".org" may be typically disregarded when determining if there is identity or confusing similarity.
However, because Complainant is a company specialized in providing news, the combination of Complainant's trademark and the ".news" extension is not irrelevant to this case. Given the nature of Complainant's business, the gTLD ".news" only increases the potential for confusion. See Inter IKEA Systems B.V. v. Hka c/o Dynadot Privacy,WIPO Case No. D2014-1874 (the domain name is confusingly similar to the mark IKEA and …to the extent ".buzz" denotes news and information about "Ikea" this would exacerbate confusion); Inter IKEA Systems B.V. v. Roman Zubrickiy,WIPO Case No. D2015-0046 (the mark IKEA FAMILY refers to a rewards club for the Complainant's customers, the addition of the gTLD suffix ".club" to the domain name has the effect of reinforcing the misimpression that the Respondent is associated with the Complainant) and Clifford Chance LLP v. Mykhailo Loginov, Loginov Enterprises d.o.o,WIPO Case No. D2015-0025, (holding that given the nature of Complainant's business, the gTLD ".attorney" in the domain name only increases the potential for confusion and deception).
Based on the foregoing, the Panel finds that the disputed domain name is confusingly similar to the BLOOMBERG and BLOOMBERG NEWS trademarks. B. Rights or Legitimate Interests
There is no evidence that Respondent has registered any trademark that consists of, or contains, the BLOOMBERG trademark, or any material portion thereof. Respondent's name does not bear any resemblance to the disputed domain name nor is there any basis to conclude that Respondent is commonly known by the BLOOMBERG trademark or the disputed domain name. There is no evidence that Complainant has entered into any agreement, authorization or license with Respondent with respect to the use of the BLOOMBERG trademark or that the Respondent has ever been authorized by Complainant to use the BLOOMBERG trademark in any way.
Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, Respondent has not submitted any response to support such a claim. Respondent does not use a disputed domain name in connection with a bona fide offering of goods or services nor is Respondent making any legitimate noncommercial or fair use of the disputed domain name.
Based on the foregoing, the Panel rules that Respondent has no right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the respondent, as follows:
(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name ; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct ; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor ; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location.
With respect to bad faith registration, the Panel notes that the disputed domain name is composed of the trademark BLOOMBERG and the gTLD ".news". Such a combination is highly unlikely unless Respondent knew of Complainant's trademark at the time of registering the disputed domain name since Complainant's main activity is in the news field.
In addition, the trademark BLOOMBERG is widely known and had been in used for nearly three decades before Respondent's registration of the disputed domain name in July 2015.
With respect to bad faith use, the Panel notes that the disputed domain name is not in use.
It is well established that the lack of so-called active use (e.g., to resolve to a website) of the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.
The Panel has examined all the circumstances of the case to determine whether Respondent is acting in bad faith. The cumulative circumstances found to be indicative of bad faith in the present case are:
- Complainant's trademark is a well-known trademark.
- Respondent is in default: there was no response to the Complaint, nor to the cease and desist letter.
- The disputed domain name is so connected to Complainant's trademark that there is no possible good faith use for the disputed domain name.
- According to the Complaint, Respondent registered several domain names that misappropriate the trademarks of well-known brands and businesses. This assertion has not been contested by Respondent.
In light of these particular circumstances, the Panel concludes that Respondent knew of Complainant's trademark at the time of registering the disputed domain name and the passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name "was registered and is being used in bad faith" by Respondent. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Pablo A. Palazzi
Sole Panelist
Date: September 18, 2015
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