Bridgewater Associates, LP v. Private Registration
Claim Number: FA1511001650226
Complainant is Bridgewater Associates, LP (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Private Registration (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bwater.site>, registered with Crazy Domains FZ-LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Johnathan Agmon as Panelist (Chair), Judge Bruce Meyerson (Ret.), as Panelist, and Peter Rindforth, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2015; the Forum received payment on November 30, 2015.
On December 2, 2015, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <bwater.site> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bwater.site. Also on December 3, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Johnathan Agmon, Judge Bruce Meyerson (Ret.) and Petter Rindforth as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is Bridgewater Associates, LP, founded on 1975. The Complainant manages approximately $154 billion in global investments for a wide array of institutional clients, including foreign governments and central banks, corporate and public pension funds, university endowments and charitable foundations. Approximately 1,500 people work at Bridgewater, which is based in Westport, Connecticut.
The Complainant is the owner of the U.S. BRIDGEWATER Trademark registration since October 17, 2000 (Reg. number 2,395,503).
The Complainant is the owner of the Benelux BWATER Trademark registration since November 12, 2015 (Reg. number 0985091).
The disputed domain name <bwater.site> was registered on July 20, 2015. The disputed domain name is an active website offering financial services.
The Complainant argues it has rights in the BRIDGEWATER and BWATER trademarks through various registrations with governmental authorities as well as its operations via the <bwater.com> domain name.
The Complainant argues that the Respondent’s <bwater.site> is confusingly similar to the trademarks in which Complainant has established rights under Policy ¶ 4(a)(i).
The Complainant argues that the disputed domain merely abbreviates the BRIDGEWATER mark by eliminating the word “RIDGE,” and appends the generic top-level domain (“gTLD”) “.site.”
Also, the Complainant argues that the disputed domain incorporates the BWATER mark fully, and attaches the gTLD “.site.”
The Complainant argues that the Respondent has no rights or legitimate interests in the <bwater.site> domain name. The Complainant further argues that the Respondent has not been commonly known by the disputed domain name, nor has the Respondent been authorized or licensed to use the BRIDGEWATER or BWATER marks.
The Complainant further argues that the Respondent’s use of the disputed domain name, to pass itself off as the Complainant and attempt to fraudulently acquire Internet users' information, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant further argues that the Respondent uses the disputed domain name to phish for personal information and does so in bad faith. Further, the Respondent’s choice of domain name and use of the Complainant’s logo and trademarks indicates that the Respondent is attempting to pass itself off as the Complainant.
The Complainant further argues that the Respondent’s use of the disputed domain name clearly demonstrates that the Respondent had actual knowledge of the Complainant’s trademarks at the time of registration.
B. Respondent
The Respondent failed to submit a Response in this proceeding.
The Panel finds as follows:
The disputed domain name was the subject of prior UDRP proceedings, Bridgewater Associates, LP v. Private Registration, FA 1637996 (Forum, Oct. 19, 2015) (herein after: “Bridgewater I”), brought by the Complainant. The complaint in Bridgewater I was denied. The Complainant submits that the present Panel is not bound by the decision in Bridgewater I because of new evidence, namely that the Complainant has obtained a trademark registration for the mark BWATER after the issuance of the decision in Bridgewater I. The Complainant further states that the present Panel should not be bound by Bridgwater I because the Panel there went outside the record, contrary to Rule 15(a) and relied on evidence which was not submitted by the parties. In addition, the Complainant further requests that the present Panel accept this refiled complaint because the Bridgewater I Panel incorrectly deemed irrelevant that the “Respondent clearly intended to target Complainant.” As to the other points determined in its favor (namely the second and third elements under the Policy ¶ 4(a)), the Complainant requests that the present Panel follow Bridgwater I.
A refiled complaint concerns a case where the same complainant files a second complaint against the same respondent involving the same disputed domain name as in the earlier complaint that was denied. As noted by previous panels, there is no provision in the Policy, Rules or Supplemental Rules for a rehearing or appeal from a UDRP decision, and parties are not precluded per se from refiling a complaint against the same respondent in respect of the same disputed domain name. See Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057. As a result, any refiled complaint, if accepted for review, should be reviewed de novo by the new panel taking into account any res judicata created by the previous panel’s decision. See State Farm Mutual Automobile Insurance Company v. Joe Villa, FA1401001540404 (Nat. Arb. Forum Mar. 4, 2014). There is further a general agreement amongst UDRP panelists that a refiled complaint should be allowed under the Policy only in exceptional and limited circumstances. See Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490.
Panels must therefore review a request to review a refiled case on the merits of each case, employing logic and common sense in view of principles of law relating to re-litigated cases. See Telefire Fire & Gas Detectors Ltd. V. Park Songhoon, WIPO Case No. D2015-1522. To deter complainants from refiling successive complaints until it finds a panel willing to transfer the disputed domain name, Rule ¶15(a) enables panels to use res judicata and similar common or civil law provisions to reject a refiled complaint. Prior UDRP panels have established four grounds under which a rehearing of a UDRP case will be allowed: 1. serious misconduct on the part of a judge, juror, witness or lawyer; 2. perjured evidence having been offered to the court; 3. the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or 4. a breach of natural justice. See Nature Path, Inc. v. Structural Integrity Corp., FA 1364285 (Nat. Arb. Forum Feb. 10 2011); The Duck Group, LLC v. Rubba Ducks / PERFECT PRIVACY, LLC, FA1410001585860 (Nat. Arb. Forum Dec. 1, 2014).
The registration of a trademark after the date of the prior UDRP decision was held to constitute the “discovery of credible and material evidence which could not have been reasonably foreseen or known at trial.” See Ascentive, LLC v. Jiang Lixin, FA 1202001428642 (Nat. Arb. Forum Mar. 20, 2012). In this case, the registration of the BWATER trademark by the Complainant constitutes the “discovery of credible and material evidence which could not have been reasonably foreseen or known at trial” and thus enables this Panel to rehear this case. The Bridgewater I Panel stated that the “Complainant does not claim any trademark rights in BWATER, relying instead upon a claim of confusing similarity to BRIDGEWATER.” Therefore, the Bridgewater I Panel did not create res judicata between the present parties as to the claim of identical or confusing similarity between the disputed domain name and the registered BWATER trademark. In view of the above, this case falls under one of the limited circumstances where a case may be reheard.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Complainant submitted evidence proving it has rights in the BWATER trademark through its registration with governmental authorities as well as its operations of the <bwater.com> domain name. Previous panels have found Policy ¶ 4(a)(i) rights where a complainant can demonstrate a valid governmental registration, and that such rights date back to a mark’s filing date. See, e.g., The Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL, FA 1622018 (Nat. Arb. Forum July 14, 2015) (holding that “Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. …. When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.”); see also Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Nat. Arb. Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Therefore, the Panel agrees that the Complainant has demonstrated rights in the BWATER mark for the purposes of Policy ¶ 4(a)(i).
The Panel notes that the filing date for the BWATER trademark is November 10, 2015, which is later than the registration date of the disputed domain name. However, the Panel has considered and accepts the Complainant’s argument of common law rights dating back to the BWATER trademark’s first use 15 years ago, well before the registration of the disputed domain name.
Previous panel decisions have stated that relevant proof of secondary meaning generally requires “evidence of use, sales, advertising, or similar methods or communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the goods or services to which the mark is affixed.” See Newman and Denney P.C. v. David Schorr, FA 1643577 (Nat. Arb. Forum Dec. 28, 2015).
The Panel finds that the Complainant has provided more than the mere holding of an identical domain name, and has used the BWATER trademark in commerce, and agrees that the Complainant has established a secondary meaning in the BWATER trademark sufficient to establish common law rights dating back to before the registration date of the disputed domain name.
The Complainant argues that the disputed domain name is confusingly similar to the BWATER trademark in which the Complainant has established rights under Policy ¶ 4(a)(i).
The disputed domain incorporates the BWATER trademark fully and with the additional gTLD “.site.”
As a general rule, the addition of a gTLD cannot distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the BWATER trademark to which Complainant has asserted rights pursuant to Policy ¶ 4(a)(i).
Under the Policy ¶ 4(a)(ii), it is up to the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and only then the burden shifts to the Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Complainant asserts that the Respondent is not commonly known by the disputed domain name, nor is the Respondent in possession of licensing rights that would allow it to use the BRIDGEWATER or the BWATER marks in domain names.
The Panel notes that “Private Registration” is listed as the registrant of record for the disputed domain name. Previous Panels have held that absent WHOIS or other information to the contrary, a respondent may be found to not be commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel notes that there is no record of any additional evidence to indicate that the Respondent is either commonly known by the disputed domain name or in possession of licensing rights. Where such a void exists, the Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel holds that the Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii).
The Complainant argues that the Respondent’s use of the disputed domain name fails to consist of a bona fide offering or goods or services or a legitimate noncommercial or fair use.
Based on evidence provide by the Complainant, the Panel finds that the Respondent’s use of the disputed domain name to pass itself off as the Complainant and attempt to fraudulently acquire internet users' information, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent uses the disputed domain name for a website that prominently displays the Complainant's BRIDGEWATER trademark and offers the same services as the Complainant.
The Panel concludes that the Respondent is attempting to pass itself off as the Complainant and is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant ...”).
The Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant argues that the Respondent has engaged in bad faith registration and use. The Complainant argues that the Respondent has attempted to phish for Internet users’ personal information via the disputed domain name. The Complainant has provided documentary evidence of a consumer who has been the victim of the Respondent’s alleged phishing scheme (“Bridgewater Associates in QLD has defrauded liver transplant waiting list patient $140K [<bwater.site>]”). Previous Panels have agreed that phishing behavior is indicative of bad faith registration and use. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). In light of the available evidence, the Panel holds that the Respondent’s phishing behavior demonstrates bad faith registration and use per Policy ¶ 4(b)(iv).
Further, the Respondent’s choice of domain name and use of the BWATER trademark indicate that the Respondent is attempting to pass itself off as the Complainant. The disputed domain name resolves to a website that uses the Complainant’s registered BRIDGEWATER trademark and offers services similar to those the Complainant offers on its website at <bwater.com>.
Additionally, according to the evidence provided by the Complainant, the disputed domain name displays the same video testimonials that are displayed on the Complainant’s website at <bwater.com>. The Panel finds that the Respondent, misrepresenting itself as the Complainant via the use of the disputed domain name, has clearly acted in bad faith. See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to frequently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that the Respondent has demonstrated bad faith in attempting to pass itself off as the Complainant.
The Complainant argues that the Respondent had actual and/or constructive knowledge of the Complainant's rights in the BWATER trademark. The Panel accepts the Complainant's argument that the Respondent's display of the BRIDGEWATER trademark under the disputed domain name which contains the Complainant’s BWATER trademark while offering the same services as the Complainant indicates that the Respondent had actual knowledge of the Complainant's trademarks and rights and it registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
In light of the specific facts of this case, it is evident the Respondent had registered this disputed domain name in bad faith pursuant to Policy ¶4(a)(iii).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bwater.site> domain name be TRANSFERRED from the Respondent to the Complainant.
Jonathan Agmon, Panelist (Chair)
Judge Bruce Meyerson (Ret.) Panelist
Peter Rindforth Panelist
Dated: January 18, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page