Bridgewater Associates, LP v. hamza hamed
Claim Number: FA2004001894223
Complainant is Bridgewater Associates, LP (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is hamza hamed (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bridgewaterassociatesblockchain.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2020; the Forum received payment on April 29, 2020.
On April 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bridgewaterassociatesblockchain.com> 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 April 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2020 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@bridgewaterassociatesblockchain.com. Also on April 30, 2020, 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.
A timely Response was received and determined to be complete on May 19, 2020.
On May 20, 2020 Complainant’s Additional Submission was received, which complies with Supplemental Rule 7.
On May 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko 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.
Complainant requests that the domain name(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the world’s largest hedge fund. Complainant has rights in the BRIDGEWATER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,395,503, registered Oct. 17, 2000). See Compl. Ex. 4. Respondent’s <bridgewaterassociatesblockchain.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “blockchain” and the “.com” generic top-level domain.
Respondents has no rights or legitimate interests in the <bridgewaterassociatesblockchain.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely holding the disputed domain name inactive.
Respondent registered and is using the <bridgewaterassociatesblockchain.com> domain name in bad faith. Respondent is holding the disputed domain name inactive. Respondent had constructive or actual knowledge of Complainant’s rights in the BRIDGEWATER mark at the time of registration.
B. Respondent
The BRIDGEWATER mark is not unique to Complainant, and particularly corresponds to a geographical term, such as the name of a town in New Jersey. The <bridgewaterassociatesblockchain.com> domain name was not registered with the intent of benefiting from Complainant’s mark.
Respondent obtained the <bridgewaterassociatesblockchain.com> domain name to pursue an interest in blockchain technology and not for any bad faith reason. Respondent did not acquire the domain name for the purpose of selling, renting, or otherwise transferring the domain name to Complainant. Respondent did not acquire the domain name to prevent Complainant from obtaining it.
C. Additional Submissions
Respondent’s argument that the term BRIDGEWATER is not unique is irrelevant for Policy ¶ 4(a)(i) analysis.
Respondent’s intended use to investigate blockchain technology is related to the goods and services offered by Complainant, showing that Respondent does not have rights and legitimate interest in the disputed domain name and has registered the domain name in bad faith.
Complainant is a renowned investment management firm, which is the world’s largest hedge fund today.
Since its inception in 1975, Complainant has continuously used BRIDGEWATER name and marks, including without limitation BRIDGEWATER and BRIDGEWATER ASSOCIATES to identify itself and services that it provides in the financial services industry.
Complainant operates a website at <bridgewater.com>, providing information about Complainant and the financial services offered under its BRIDGEWATER Marks. See Compl. Ex. 2.
Complainant is the subject of frequent media coverage in major publications. See Compl. Ex. 3.
Complainant holds rights in the BRIDGEWATER marks registered for financial services in Class 36, including USPTO Reg. Nos. 3,302,018 and 2,395,503, EUTM Reg. No. 3179264 and Reg. Nos. 21638650 and 3565667 in China. See Compl. Ex. 4.
The disputed <bridgewaterassociatesblockchain.com> domain name was registered on April 7, 2020 and resolves to an inactive website.
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.
Complainant has established rights in the BRIDGEWATER mark under Policy ¶ 4(a)(i) through its registration with the USPTO (Reg. No. 2,395,503, registered Oct. 17, 2000, and No. 3,302,018, registered Oct. 2, 2007 for financial services in Class 36). See Compl. Ex. 4. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <bridgewaterassociatesblockchain.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), because it incorporates Complainant’s registered BRIDGEWATER mark and company name BRIDGEWATER ASSOCIATES, merely adding the generic financial term “blockchain” and the “.com” gTLD. Adding generic terms and a gTLD to an otherwise recognizable mark may not sufficiently distinguish a disputed domain name form a complainant’s mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Complainant argues that Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Therefore, Respondent has no rights or legitimate interests in the disputed <bridgewaterassociatesblockchain.com> domain name. The WHOIS print-out on the record identifies Respondent as “hamza hamed”, while no information on the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Compl. Ex. 5.
Previous panels have generally found that a respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) where WHOIS information did not identify it under that 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).
Furthermore, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Finally, Complainant argues that Respondent fails to use the <bridgewaterassociatesblockchain.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is not using the domain name for bona fide offering of goods or services, because the domain name resolves to a parked page as can be seen from the screenshot of the disputed domain name’s resolving webpage provided by Complainant in Compl. Ex. 6.
Passive holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Therefore, the Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the <bridgewaterassociatesblockchain.com> domain name, because Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent’s reference to Bridgewater being a town in New Jersey is irrelevant for finding under Policy ¶ 4(a)(ii), having in mind that Respondent does in no way show connection of his operation to the city or demonstrates any other descriptive use of the term. Neither does Respondent show that he is somehow known by the Bridgewater name.
Furthermore, in his Response, Respondent argues that the purpose of acquiring the domain name was “part of his pursuit of interest in blockchain technology”. However, targeting the services related to the financial services provided by Complainant, or the services that consumers would clearly expect to be associated with Complainant does not show a legitimate or bona fide use of the disputed domain name from which legitimate rights or interests would derive. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Moreover, as supported by evidence on the record, Complainant’s BRIDGEWATER marks benefit from high degree of fame, so that it is rather implausible that Respondent’s registration of the disputed domain name could pursue any aim other than to free-ride on the goodwill associated with Complainant’s marks. That is clearly not a legitimate or bona fide use of a domain name. See Drexel University v. David Brouda, D2001-0067 (WIPO Mar. 20, 2001) (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant”).
Respectively, Respondent has not provided any arguments or evidence that would serve as proper defenses under UDRP paragraph 4(c). Therefore, it is found that Complainant has succeeded on the second element under Policy ¶ 4(a)(ii).
Complainant argues that at the time of registration of the disputed domain name, Respondent could not have been unaware of the BRIDGEWATER marks which are famous due to the long-term extensive use in the field of financial and investment services and wide media coverage in major publications. Respondent confirms that he intends to use the domain name for the services related to those of Complainant, which merely shows that he could not have arbitrarily chosen the domain name incorporating the famous mark in question, but rather intended to capitalize on the recognition and goodwill associated with the Complainant’s marks. This conclusion is further supported by Respondent’s misappropriation of the full Complainant’s company name Bridgewater Associates, creating direct association with the Complainant’s business, which is disruptive to Complainant, its business and goodwill in its marks.
Previous Panels have generally found misappropriation of a well-known trademark as domain name to constitute bad faith registration under the Policy. See Caravan Club v. Mrgsale, FA 95314 (Forum August 30 2000) (registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark reveals bad faith).
Furthermore, Respondent’s passive holding of the disputed domain name does not show a legitimate use or bona fide offering of goods or services. See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Respondent states he intends to use the disputed domain names in connection with blockchain technology services which are related to the services offered by Complainant. This is certainly not a legitimate or bona fide use of, and does not constitute “preparation” for the legitimate use of the disputed domain name. Rather, the website evidence proves Respondent’s bad faith registration and use of the disputed domain names.
The fame of Complainant’s mark and the lack of evidence of legitimate use and bona fide offering of goods and services by Respondent are the factors that, inter alia, support finding of passive holding as constituting bad faith registration and use. See Telstra Corporation Limited v. Neclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (the particular circumstances which lead to the conclusion that Respondent’s passive holding amounts to acting in bad faith include the facts that the Complainant’s trademark has a strong reputation and is widely known and Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name).
The Panel therefore finds that the third element at Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridgewaterassociatesblockchain.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: June 9, 2020
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