When Panels in different cases involving the same parties rule differently the question is whether one is wrong and the other right. Or, can both be right without their awards being inconsistent? A number of commentators have pointed to two cases brought by Bloomberg Finance L.P. questioningly. In Case 1, Bloomberg Finance L.P. v. bloomberg, FA1204001440735 (Nat. Arb. Forum May 29, 2012) the Panel denied the Complaint, the effect of which leaves the domain name with the Respondent. In case 2, Bloomberg Finance L.P. v. Bloomberg Realty (India) Private Limited / Bloomberg, FA1204001439263 (Nat. Arb. Forum May 30, 2012) the Panel granted the Complaint for 14 domain name and denied two which it found were not confusingly similar to Complainant’s trademark. Same Respondent in both cases who appeared and defended.
The decisions are different but not far apart. In all, the Respondent registered 17 domain names incorporating the term “Bloomberg.” Its explanation for choosing “Bloomberg” stretched credulity, but in Case 1 the Panel fell back on the ongoing disputes between the parties and concluded that “[o]ther panels have also chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes.” In doing as other panels had done the Panel pointedly denied the complaint “without prejudice.” The Panel in Case 2 rejected Respondent’s explanations for choosing “Bloomberg.” What is the distance between denying a complaint without prejudice and granting a complaint where respondent’s explanations are incredible? Not much I think.
In Case 1 Complainant did not lose because Respondent proved a right or legitimate interest but because the Panel believed the dispute was outside the scope of the Policy. There is a difference between dismissing a complaint and denying relief. Dismissing “without prejudice” implies skepticism of Respondent’s position. Lack of credibility is more noticeable in Case 2, in part because the Panel chose to allow the Respondent to speak for itself. And, its speech exposed the ludicrousness of its explanations: “[T]he nascence of Bloomberg group came upon as an idea to create a difference in the global economy through committed services and high customer satisfaction index.” Further:
As a result of [its] hard work and intelligence, the business conducted by Respondent under the name ‘bloomberg’ has been successful. For the said reasons, it is incorrect to conclude that the Domain Names were registered in bad faith.
This result of its “hard work and intelligence” is truly impressive; if it is believed! In a mere two year period from 2010 when it registered the domain names it has gone from nothing – the “nascence” of an idea to call his group the “Bloomberg group” — to “developing houses, residential townships, hospitals, hotels and various commercial projects in metros and business centers of India.”
If the parties have ongoing trademark disputes that have advanced to a civil action in India which appears to be indicated in Case 1 – “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” – then the Panel correctly dismissed the complained. If the parties have not advanced to civil action or the domain name dispute is not part of a civil complaint then the Panel in Case 2 is also correct based on the record and inferences that he drew from the statements by the parties. I quote in full:
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.
The Policy expressly authorizes Panels to draw inferences in the event of default, but arbitrators as judges of fact draw inferences all the time from the record not only when a party defaults or fails to present evidence under its control. In Case 1, the Panel lodged his inference in the words “without prejudice.” In Case 2, the Panel expressed his inferences directly by granting relief.