Bridgewater Associates, LP v. Oliver Arceo / Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1608001691377
Complainant is Bridgewater Associates, LP (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Oliver Arceo / Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bwatermgm.co> and <bwatermgmt.net>, registered with GoDaddy.com, LLC and Shinjiru MSC Sdn Bhd, respectively.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2016; the Forum received payment on August 26, 2016.
On August 29, 2016 GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bwatermgm.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 2016 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@bwatermgm.co, and postmaster@bwatermgmt.net. Also on September 2, 2016, 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.
On September 9, 2016, Shinjiru MSC Sdn Bhd confirmed by e-mail to the Forum that the <bwatermgmt.net> domain name is registered with Shinjiru MSC Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru MSC Sdn Bhd has verified that Respondent is bound by the Shinjiru MSC Sdn Bhd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant registered its BRIDGEWATER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,395,503, registered Oct. 17, 2000), and has rights in the mark for financial management services. UDRP panels have previously held that Complainant has common law rights in its BWATER mark, due to its continued use as Complainant’s main website. See Bridgewater Associates, LP v. Private Registration, FA1650226 (Forum Jan. 18, 2016)(Respondent’s domain names are confusingly similar because it features either the wholly incorporated BWATER mark, or a commonly abbreviated version of the BRIDGEWATER mark.). The addition of “mgm” and “mgmt” are merely descriptive terms of Complainant’s business, and the descriptive terms plus a generic top-level domain (“gTLD”) is insufficient to distinguish Respondent’s domain names from Complainant’s marks.
Respondent has no rights or legitimate interests in the <bwatermgm.co> and <bwatermgmt.net> domain names. Complainant has not licensed or otherwise authorized Respondent to use any of its marks, and Respondent is not commonly known by the disputed domain names or “Bridgewater Asset Management.” Respondent is not authorized to offer financial services in the country that it resides. Respondent’s resolving website is either competing with Complainant, offering counterfeit goods and services, or attempting to phish information from mistaken Internet users. None of these uses can constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and(iii).
Respondent has registered and is using the disputed domain names in bad faith. Respondent’s use of the BRIDGEWATER marks on its resolving website is evidence of its attempt to pass itself off as Complainant for commercial gain. Further, the simple act of offering competing services at a confusingly similar domain name is bad faith under Policy ¶ 4(b)(iv). Respondent’s practice of phishing personal information from Internet users is also evidence of their bad faith under Policy ¶ 4(a)(iii). The use of the marks, along with the confusingly similar domain, and a disclaimer that explicitly lists Complainant’s business evidences that Respondent had actual notice of Complainant’s rights in the BRIDGEWATER and BWATER marks when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bridgewater Associates, LP, of Westport, CT, USA. Complainant is the owner of domestic and international registrations for the marks BRIDGEWATER and BWATER, along with variations thereof. Complainant is also the owner of several domain names including the domain name <bwater.com>. Complainant has continuously used its marks and domain names for at least fifteen years in connection with its provision of goods and services in the global investments industry.
Respondent is Oliver Arceo / Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, Taguig, Philippines. Respondent’s registrar’s address is listed as Queensland, Australia. The Panel notes that Respondent registered the <bwatermgmt.net> domain name on or about April 23, 2016; and it registered the <bwatermgm.co> domain name on or about January 7, 2016.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that both domain names are registered by the same Respondent, because they both resolve to nearly identical websites for “Bridgewater Asset Management,” a company offering financial services out of the United Kingdom (“UK”). The Panel does note that both domain names were registered with different registrars, several months apart from one another, with no identical WHOIS information, but no information has been provided to explain the website resolutions.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are commonly owned/controlled by a single Respondent who is using multiple aliases.
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 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 (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.”).
Complainant asserts that it has rights in the BRIDGEWATER mark based on its registration with the USTPO (e.g., Reg. No. 2,395,503, registered Oct. 17, 2000). Prior panels have held that registration with the USPTO confers rights in the registered mark, regardless of whether a respondent operates in the United States. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). The Panel here finds that Complainant has demonstrated rights in the BRIDGEWATER mark dating back to October 17, 2000 under Policy ¶ 4(a)(i).
Complainant further contends that it has common law rights in the BWATER mark based on the secondary meaning it has created from continuously using the BWATER mark in its <bwater.com> domain name. Complainant also claims that it registered the BWATER mark with Benelux Office for Intellectual Property (Reg. No. 985091). A complainant need not have a registered trademark with a governmental authority to establish rights under Policy ¶ 4(a)(i). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). Complainant submitted a copy of its resolving website at <bwater.com> as evidence of secondary meaning. Panels may look to a variety of factors to determine if a complainant has achieved secondary meaning. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as Mar. 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.). In addition to this evidence, Complainant has provided UDRP precedent of a three-member panel holding that the BWATER mark has achieved secondary meaning, See Bridgewater Associates, LP v. Private Registration, FA1650226 (Forum Jan. 18, 2016) (“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….”). The Panel here finds that Complainant’s BWATER mark has achieved secondary meaning, and that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <bwatermgm.co> and <bwatermgmt.net> domain names are confusingly similar to its BWATER mark. Complainant argues that “mgm” and “mgmt” are merely abbreviations for the descriptive term “management,” and that such abbreviation in combination with a gTLD is insufficient to distinguish a domain name with the fully incorporated BWATER mark. Past panels have held that a disputed domain name that adds only a descriptive term and a gTLD to a complainants mark can be confusingly similar. See Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). The Panel here finds that both of Respondent’s domain names are confusingly similar to Complainant’s BWATER mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <bwatermgm.co> and <bwatermgmt.net> domain names. Complainant states that it has never licensed or otherwise authorized Respondent to use any of its BRIDGEWATER or BWATER marks. Additionally, Complainant contends that Respondent is not commonly known by the disputed domain names or the “Bridgewater Asset Management,” that it purports itself to be. The Panel notes the WHOIS information for <bwatermgm.co> lists “Oliver Arceo” as the regsitrant, and the WHOIS information for <bwatermgmt.net> lists “Domain Admin” with organization “Privacy Protection Service INC d/b/a PrivacyProtect.org” as the registrant. Respondent has provided no evidence regarding this element. Previous panels have used the WHOIS information as a factor to determine that a respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Accordingly, based on the WHOIS information and Respondent’s lack of evidence, the Panel here finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain names. Complainant has provided screen shots of Respondent’s websites at the disputed domain names where it presents itself as “Bridgewater Asset Management.” Complainant asserts that while Respondent appears to be offering competing financial services, Respondent’s operation is in fact a sham. Complainant has submitted a screen shot from the UK Financial Conduct Authority’s website, that allegedly notes Respondent is not registered to provide financial services in the UK where the company’s business address is listed. Complainant argues that this is evidence of Complainant offering counterfeit financial services, and that even if Respondent were legitimate, such competing use of a confusingly similar domain name does not confer rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). Previous panels have found that both competing use and making counterfeit offerings of a complainant’s products do not meet the standards of Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). The Panel here finds that Respondent is not using the disputed domain names to make a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Complainant additionally contends that Respondent is attempting to pass itself off as Complainant, which is further evidence of a lack of rights and legitimate interests in the disputed domain name. Complainant argues Respondent is seeking to impersonate and create a false connection with Complainant, despite Respondent’s featuring of a disclaimer at the bottom of its resolving website. The Panel notes the disclaimer in relation to Complainants allegations. The Panel finds that the disclaimer does not mitigate any confusion here, and that a respondent passing itself off as a complainant does not confer rights or legitimate interests in the disputed domain name. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also Crow v. LOVEARTH.net, FA 203208 (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 here finds that Respondent has no rights or legitimate interests in the <bwatermgm.co> and <bwatermgmt.net> domain names.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent registered and is using the disputed domain names in bad faith. Complainant asserts that Respondent is intentionally attempting to pass itself off as Complainant, in order to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of their competing website. Complainant first asserts that Respondent’s offering of financial services constitutes competing use of a confusingly similar domain name in violation of Policy ¶ 4(b)(iv). Past panels have found respondents in bad faith when they are a competitor of a complainant. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant also calls attention to the repeated use of the BRIDGEWATER mark on Respondent’s domain names to show that Respondent is passing itself off as Complainant. Prior panels have found a respondent deliberately passing itself off as a complainant to be in bad faith under Policy ¶ 4(a)(iii) as well. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business. . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). The Panel here finds that Respondent is attempting to attract Internet users for commercial gain by using Complainant’s BRIDGEWATER mark with the confusingly similar domain name.
Complainant also argues that Respondent is using the disputed domain names in bad faith to “phish” for Internet users’ personal information. Complainant asserts that the disputed domain names feature a “Contact Us” page that tries to gather such information, and that this is evidence of phishing. see also Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Prior panels have agreed that phishing constitutes bad faith use of a domain name under Policy ¶ 4(a)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates). The Panel here finds that Respondent is attempting to phish information from Internet users seeking Complainant, and that this practice illustrates registration and use of the domain names in bad faith.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bwatermgm.co> and <bwatermgmt.net> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 13, 2016
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