Well another interesting day in UDRP world were there are two separate UDRP action both brought by Bloomberg Finance L.P. owner of Bloomberg.com, against another company named Bloomberg which is located in India.
In that case the one man panel found that both parties had trademark claims to the term “Bloomberg” and therefore the case was outside of a UDRP and should be heard in a court.
The second one person panel came to a split decision finding that the Bloomberg India company had infringed on 14 domains and awarded them to Bloomberg Finance and not infringed by the registration of two other domains and left them with the domain holder
The domain awarded to Bloomberg Finance in the 2nd UDRP were:
The 2nds panel left these two domains with the domain holder:
So to narrow the question how can one panel find that the Indian company has possible trademark rights to BloombergWorldwide.com and the other panel find it has no such rights to BloombergGlobal.com?
We all know there is no consistency to UDRP but I’m not sure there has ever been two cases decided on the same day with the same complainant against the same domain holder on quite similar domains and completely different results.
Here are the relevant facts and findings from the 1st panel:
“Complainant registered the trademark and service mark BLOOMBERG (the “BLOOMBERG Mark”) with the following trademark authorities:”
i. Indian Controller General of Patents Designs and Trademarks (“CGPDTM”) (e.g., Reg. No. 724378B registered July 26, 1996);
ii. Czech Republic Industrial Property Office (“CRIPO”) (e.g., Reg. No. 257,639 registered September 29, 2003); and
iii. United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,736,744 registered July 15, 2003).
“Complainant has used its BLOOMBERG Mark in connection with its business of providing worldwide financial news, analysis and information, and related goods and services since 1987. It is headquartered in New York City, and employs more than 15,000 people in over 135 offices around the world.”
“Respondent registered bloombergworldwide.com (the “Domain Name”) on April 23, 2010.\\
The Respondent asserts that it has organized a group of companies whose names incorporate the name “Bloomberg,” and that it has filed for a trademark with the CGPDTM for the Bloomberg name with regard to its real estate services.”
“Respondent has also registered the Domain Name and a number of others which incorporate the name Bloomberg.”
“It claims that it is therefore commonly known by the name Bloomberg within the meaning of Policy ¶4(c)(ii).”
“Respondent also asserts that since 2010 it has been using the Domain Name in connection with its business operations, which are in fact a bona fide offering of goods and services within the meaning of Policy ¶4(c)(i).”
” Respondent offered no independent or documentary evidence in support of these claims. However, Exhibit F attached to the Complaint consists of screenshots of Respondent’s website resolving from the Domain Name, which clearly evidence some sort of business being carried on under the name Bloomberg.”
“”These parties are involved in a number of disputes over the right to use the name Bloomberg generally in connection with a broad range of business ventures. Their dispute over the Domain Name is only one of the trademark or trademark-related matters pending between them, and both parties assert that they have legitimate rights to use that name.”
“Such cases are not within the scope of the Policy. ”
“In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
“The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.”
“Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. ”
“The policy relegates all “legitimate disputes” to the courts.”
“Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.”
“For the reasons set forth above, the Panel ORDERS that the Complaint be, and it hereby is DISMISSED, without prejudice.”
Now as for the Second panel here are the relevant facts and findings:
“The domain names <bloomrangent.com>, and <bloomrangmedia.com>, the Panel is not satisfied that they are confusingly similar to Complainant’s BLOOMBERG mark, since the word “bloom” is unlikely to cause Internet users to wonder whether the domain name is associated in some way with Complainant and the addition of “rangent” and “rangmedia”do not alter this conclusion.”
“Complainant has established this aspect of its case with regard to 14 of the 16 domain names with which this proceeding is concerned. Henceforth these reasons will be confined to a consideration of those 14 domain names (“the 14 Domain Names”).”
“Complainant has shown that its BLOOMBERG mark has been very well known worldwide for many years and was ranked 19th in a list of famous and well-known marks in Trademark World”
April 2004; that Complainant first registered the BLOOMBERG mark in India in 1996;”
“On the material before the Panel it appears Respondent conceived the idea of expanding to the “global level” under various combinations of the name Bloomberg in 2010 and went about incorporating companies, applying to register trademarks and registering domain names, all of which incorporated the Bloomberg name, in furtherance of that idea.”
“Respondent has not denied knowledge of Complainant’s BLOOMBERG mark when that idea was adopted.”
“In contending that Complainant is in a dominant position and is attempting by these proceedings to destroy competition, Respondent has acknowledged that the parties are in competition with each other. It is more likely than not that Respondent was aware of that fact at all relevant times. These circumstances lead to the conclusion that Respondent had Complainant and its mark in mind not only when it registered the 14 Domain Names but when it conceived the idea of expanding globally under Bloomberg-formative names in 2010.”
“It follows that, despite its assertion that the use of the name ‘Bloomberg’ is merely a coincidence, Respondent was more likely than not motivated to adopt those names by a desire to trade off Complainant’s global reputation in its BLOOMBERG mark.”
“Use of a domain name which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services for the purposes of the Policy”
“Only one of the 14 Domain Names resolves to an active website, namely bloombergltd.com which, in its presentation, albeit with contact details in India and some services which differ from those hitherto offered by Complainant, is nevertheless likely to be understood by Internet users to be an emanation of Complainant’s business in India and hence not to give rise to a legitimate interest on the part of Respondent. ”
“The remaining 13 of The 14 Domain Names do not lead to active websites so cannot be found to have been used or developed for a legitimate non-commercial or fair purpose nor to have been used in connection with a bona fide offering of goods or services.”
“”It should be noted that it is necessary for both bad faith registration and bad faith use to be established. However, the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept.
“For the reasons given under the previous heading, the Panel finds that all the 14 Domain Names were registered in bad faith, since they were registered for the purpose of trading globally off Complainant’s goodwill in its famous BLOOMBERG trademark.”
“As mentioned, the only domain name which leads to an active website is <bloombergltd.com>. The Panel finds that this domain name has been used by Respondent intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BLOOMBERG mark as to the source, sponsorship, affiliation or endorsement of its website. ”
“The remaining 13 domain names do not resolve to active websites. However, since the Panel cannot conceive of any use to which they could be legitimately put without creating a similar likelihood of confusion, the Panel finds that Respondent’s passive use of those domain names constitutes use in bad faith.”
“Accordingly Complainant has established this element of its case with respect to the 14 Domain Names.”