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 other suffixes.
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-à-vis the above principles and made the following analysis:
- Similarity with Complainant's
Trademark
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 this test. - 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 faith.
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 ideology."
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