While, "Imitation is the best form of
flattery", would the same hold true for the case of
Intellectual Property as well? With the number of fakes and look
alikes that flood the market for fast moving consumer products,
another area that seems to be increasingly flooded with deceptive
similars is that of domain names. This trend seems to be on the
rise since human error in keying-in domain names cannot be obviated
in totality. However, Intellectual Property owners are anything but
flattered by such blatant copying.
Recently Bloomberg Finance LP enforced its right on their mark
"BLOOMBERG" by filing a complaint under the Uniform
Domain Name Dispute Resolution Policy (UDRP) at the National
Arbitration Forum. The complainant having registered trademarks,
alongside worldwide reputation for its trademark and being in India
since 2009 questioned the usage of the term
"BLOOMBER/BLOOMBERG" by an Indian company Bloomberg
Realty (India) P. Limited.
The domains under the scanner were Bloomberbps.com;
bloombergairways.com; bloombergcements.com; bloombergent.com;
bloombergestate.com; bloombergglobal.com; bloomberghoms.com;
bloomberghospital.com; bloomberghotels.com; bloomberghousing.com;
bloomberginfra.com; bloombergltd.com; bloombergog.com;
bloombergsolar.com; bloomrangent.com and bloomrangmedia.com.
As one would notice, several of the domains under the complaint,
used the deceptively similar term "Bloomber/Bloomberg" as
part of their top level domain name. The list of domains complained
against also included two domains constituting the term BLOOM with
The argument led by the Complainant before the Panel referred to
the three golden parameters enshrined in Paragraph 4(a) of the
Policy, which governs the requirements for a domain name to be
cancelled or transferred:-
the Registrant's domain name is identical or
confusingly similar to a name, trademark or service mark in which
the Complainant has rights;
the Registrant has no rights or legitimate interests in
respect of the domain name; and
the Registrant's domain name has been registered or is
being used in bad faith."
The Panel looked at the domain names vis-ŕ-vis the above
principles and made the following analysis:
Similarity with Complainant's
As regards similarity with the trademark of the Complainant, the
test laid down in Sanofi-Aventis V. Trevenio, WIPO Case No.
D2007-0648 was followed. The formulation adopted was "is
it likely that, because of the similarity between the domain name
on one hand and the Complainant's trademark on the other hand,
people would wonder whether the domain name was associated in some
way with the Complainant" 14 of the 16 domains passed
Right or Legitimate interests
With only one of the 14 sites having the term "bloomber"
active and no credible grounds for adopting the term
"BLOOMBERG" with various suffixes, the respondent could
not prove having any right or legitimate interest in the same.
Further the worldwide reputation of the Complainant's mark and
the fact that the first application was made as long back as 1996
weighed heavily in favour of the complainant.
Registration and Use in Bad Faith.
As per the policy, both Bad faith registration and Bad faith use
needed to be proved. The panel on review of the registration and
use of the 14 domains having the term "Bloomber" came to
the conclusion that both registration and use were in bad
After reviewing each of the domain names on the above elements,
the panel concluded that:-
In terms of 14 Domain Names where the term
"Bloomber/Bloomberg" was used in its entirety, the
Complainant succeeded as the above three elements were satisfied in
its favour. Accordingly the respondent was directed to transfer the
14 domains to the Complainant.
In terms of the domain names "bloomrangent" and
"bloomrangmedia" the usage of the term "bloom"
alone could not satisfy the three part test. The Panel observed
that the term BLOOM was generic and in common usage, thus failing
the first test .Accordingly, they allowed the respondent to retain
these domains in their name.
At one end of the spectrum, Companies seek to build reputation
through decades of presence in the market, and working on creation
of a brand identity, at the other there are those who seek to piggy
back on that reputation for a quick shot at fame. The World is
indeed becoming smaller by the day and hour and impersonators
indeed must beware!
There is a concerted effort the world over to synchronize
Intellectual Property laws and give teeth to their enforcement so
that the right owners are adequately protected. In the words of
Lawrence Lessig, "Notwithstanding the fact that the most
innovative and progressive space we've seen - the Internet -
has been the place where intellectual property has been least
respected. You know, facts don't get in the way of this
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